DCT
3:17-cv-01356
InVue Security Products Inc v. Mobile Tech Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: InVue Security Products Inc. (Ohio)
- Defendant: Mobile Tech, Inc. d/b/a Mobile Technologies Inc. and MTI (Indiana)
- Plaintiff’s Counsel: Moore & van Allen, PLLC; Dority & Manning, PA.
- Case Identification: 3:17-cv-01356, W.D.N.C., 12/15/2015
- Venue Allegations: Venue is alleged to be proper because Plaintiff’s principal place of business is in the district, and Defendant has allegedly committed acts of infringement in the district and is subject to personal jurisdiction.
- Core Dispute: Plaintiff alleges that Defendant’s retail security products infringe patents related to programmable security systems that use unique, non-universal codes to arm and disarm merchandise alarms.
- Technical Context: The technology addresses security vulnerabilities in retail environments where universal keys used to disarm anti-theft devices can be stolen and misused.
- Key Procedural History: Both asserted patents, which share a specification, were subject to Inter Partes Review (IPR) proceedings initiated after the complaint was filed. The IPR for U.S. Patent No. 8,884,762 resulted in the cancellation of all claims. The IPR for U.S. Patent No. 9,135,800 resulted in the cancellation of all claims asserted in the complaint, though other claims not explicitly asserted survived. These subsequent administrative actions raise fundamental questions about the viability of the present lawsuit as originally filed.
Case Timeline
| Date | Event |
|---|---|
| 2005-12-23 | Priority Date for ’800 and ’762 Patents |
| 2014-11-11 | ’762 Patent Issued |
| 2015-09-15 | ’800 Patent Issued |
| 2015-12-15 | Complaint Filed |
| 2016-04-14 | IPR Petitions Filed Against ’800 and ’762 Patents |
| 2019-07-29 | IPR Certificate Issued for ’800 Patent |
| 2019-07-30 | IPR Certificate Issued for ’762 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,135,800 - "Programmable Security System and Method for Protecting Merchandise"
- Patent Identification: U.S. Patent No. 9,135,800, “Programmable Security System and Method for Protecting Merchandise,” issued September 15, 2015. (Compl. ¶6).
The Invention Explained
- Problem Addressed: The patent describes a known problem in retail security where keys used to arm and disarm merchandise alarms can be stolen and used illicitly, either in the same store or at other stores that use compatible systems. (’800 Patent, col. 2:1-15).
- The Patented Solution: The invention is a three-part system: a programming station, a programmable key, and one or more security devices. The programming station generates a security code that is unique to that station (and by extension, that store) and transmits it to the key. The key then programs the security device with this unique code. Subsequently, the key can only operate security devices that share this specific code, rendering a stolen key useless in other locations. (’800 Patent, Abstract; col. 2:16-29).
- Technical Importance: This system architecture was designed to defeat the "stolen key" problem by replacing a universal or easily duplicated key system with a localized, programmable, and unique digital handshake between the key and the device. (’800 Patent, col. 2:25-29).
Key Claims at a Glance
- The complaint asserts at least independent claim 1. (Compl. ¶22).
- The essential elements of independent claim 1 include:
- A programming station configured to randomly generate a single security code unique to the programming station and store it in a memory.
- A programmable key that communicates with the station to receive and store the single security code.
- A security device with an alarm, a memory to store the code, and a means to activate the alarm if its integrity is compromised.
- The programmable key is configured to arm or disarm the security device based on a matching of its stored code with the code stored in the security device.
U.S. Patent No. 8,884,762 - "Programmable Security System and Method for Protecting Merchandise"
- Patent Identification: U.S. Patent No. 8,884,762, “Programmable Security System and Method for Protecting Merchandise,” issued November 11, 2014. (Compl. ¶7).
The Invention Explained
- Problem Addressed: The patent addresses the same problem as the ’800 Patent: the risk of theft and misuse of keys for retail anti-theft systems. (’762 Patent, col. 2:1-15).
- The Patented Solution: The invention describes a functionally similar system where a programming station generates a security code, programs a key, and the key then operates corresponding security devices. The specification also discloses additional features such as internal timers to invalidate a key after a set period (e.g., 96 hours) and counters to deactivate a key after a maximum number of uses, further enhancing security. (’762 Patent, Abstract; col. 2:35-62).
- Technical Importance: Like the ’800 patent, this technology provided a method to increase security and control over anti-theft systems by making the keys programmable, time-limited, and store-specific. (’762 Patent, col. 2:16-29).
Key Claims at a Glance
- The complaint asserts at least independent claim 1. (Compl. ¶43).
- The essential elements of independent claim 1 include:
- A programming station configured to generate and store a security code.
- A programmable key that communicates with the station to receive and store the security code.
- A security device with an alarm, a memory for the code, and a switch that activates the alarm if the device's integrity is compromised.
- The programmable key communicates with the security device to arm or disarm it upon a matching of the security codes.
III. The Accused Instrumentality
Product Identification
The complaint names the "Freedom Micro," "Freedom Micro DI," "Intellikey Gen 2," and "Gen2 Intellikey Starter Kit," which includes the "Intellikey Gen 2" and "Multiple Code Processor," as the Accused Products. (Compl. ¶11).
Functionality and Market Context
- The complaint alleges that the Accused Products collectively form a security system with a programming station, a programmable key, and a security device. (Compl. ¶23, ¶44). The system is alleged to operate by generating a security code at the station, transferring it to the key, and using the key to arm or disarm security devices based on a code match. (Compl. ¶23, ¶44).
- These are described as security products that Defendant manufactures and sells in the U.S. for use by retailers, allegedly causing Plaintiff to suffer lost sales revenue. (Compl. ¶¶11, 24, 45).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint outlines its infringement theory by reciting the elements of the asserted claims and alleging that the Accused Products contain each element.
’800 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a programming station configured to randomly generate a single security code unique to the programming station and having a memory for storing the single security code | The Accused Products include a programming station that randomly generates a single unique security code and stores it in memory. | ¶23 | col. 9:4-13 |
| a programmable key configured to communicate with the programming station to receive and store the single security code in a memory | The Accused Products include a programmable key that communicates with the station to receive and store the security code. | ¶23 | col. 9:14-18 |
| a security device comprising an alarm and a memory for storing the single security code, the security device configured to be attached to an item of merchandise, the security device further configured to activate the alarm in response to the integrity of the security device being compromised | The Accused Products include a security device with a memory for the code, attaches to merchandise, and has an alarm that activates when its integrity is compromised. | ¶23 | col. 10:30-38 |
| wherein the programmable key is configured to arm or disarm the security device upon a matching of the single security code stored in the memory of the security device with the single security code stored by the programmable key | The security device is armed or disarmed with the programmable key upon a matching of the codes stored in the device and the key. | ¶23 | col. 10:48-64 |
’762 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a programming station configured to generate a security code and having a memory for storing the security code | The Accused Products include a programming station that generates and stores a security code. | ¶44 | col. 6:25-31 |
| a programmable key configured to communicate with the programming station to receive the security code and to store the security code in a memory | The Accused Products include a programmable key that communicates with the station to receive and store the code. | ¶44 | col. 8:21-34 |
| a security device comprising an alarm and a memory for storing the security code...further comprising a switch configured to be actuated for activating the alarm in response to the integrity of the security device being compromised | The Accused Products include a security device with a memory, an alarm, and a switch that activates the alarm when the device's integrity is compromised. | ¶44 | col. 7:7-45 |
| wherein the programmable key is configured to communicate with the security device to arm or disarm the security device upon a matching of the security code... | A communication between the key and security device arms or disarms the device upon a code match. | ¶44 | col. 10:48-64 |
Identified Points of Contention
- Factual Questions: The complaint's allegations are conclusory and track the claim language without providing specific technical evidence. A central point of contention will be whether the Accused Products, in actual operation, perform the functions as claimed. For example, what evidence does the complaint provide that the Defendant's "Multiple Code Processor" performs the "random generation" of a "unique" code as required by claim 1 of the ’800 Patent?
- Scope Questions: A potential dispute may arise over the difference between the '800 Patent's requirement for a "randomly" generated code "unique to the programming station" and the '762 Patent's broader requirement for "a security code." This suggests the "random" and "unique" limitations of the '800 patent will be a focus of argument regarding infringement.
V. Key Claim Terms for Construction
The Term: "randomly generates" (’800 Patent, Claim 1)
- Context and Importance: This term distinguishes claim 1 of the ’800 Patent from its counterpart in the ’762 Patent. The infringement analysis for the ’800 Patent will hinge on whether the accused system's method of code generation meets the definition of "randomly."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification does not provide an explicit definition of "randomly." A party may argue that in this context, it simply means a code that is not predetermined or is unpredictable to an outside observer, rather than requiring a specific cryptographic algorithm.
- Evidence for a Narrower Interpretation: The claim links "randomly generates" to the creation of a "unique security code." (’800 Patent, col. 28:5-7). A party may argue this implies a specific technical process designed to ensure uniqueness, pointing to the patent's goal of preventing illicit key use.
The Term: "unique to the programming station" (’800 Patent, Claim 1)
- Context and Importance: This is the core limitation that enables the patent's solution to the stolen key problem. Proving infringement requires showing the accused system's codes are tied to a specific hardware station.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states the goal is to create a code that is "unique to a particular retail store," which could be interpreted as covering a system where multiple stations in one store share a common unique code. (’800 Patent, col. 2:25-26).
- Evidence for a Narrower Interpretation: The specification states that "the SDC initially generated always stays with the programming station 3," suggesting the code is tied to the specific physical device that created it. (’800 Patent, col. 9:22-24). This supports a construction limited to a single piece of hardware.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by selling the Accused Products with the intent that its customers use them in an infringing manner and by providing instructions, training, and observing such use. (Compl. ¶¶ 30-33, 51-54). It also alleges contributory infringement by stating the products are not staple articles of commerce and are especially adapted for infringing use. (Compl. ¶¶ 14-17).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged knowledge of the patents. It claims constructive knowledge through Plaintiff's compliance with marking requirements and alleges actual knowledge from at least the date of service of the complaint. (Compl. ¶¶ 18-19, 28, 49).
VII. Analyst’s Conclusion: Key Questions for the Case
- Viability of Asserted Claims: A threshold issue, arising from administrative proceedings that occurred after this complaint was filed, is the legal status of the asserted patent claims. Given that the U.S. Patent and Trademark Office cancelled all claims of the ’762 Patent and the specific claim of the ’800 Patent asserted in the complaint, a foundational question is whether any viable cause of action remains from the original pleading.
- Evidentiary Support for Infringement: Should the case proceed on any surviving claims, a key question will be evidentiary. The complaint makes conclusory allegations of infringement without providing detailed technical facts. The case will turn on whether Plaintiff can produce evidence that the accused "Intellikey" system's actual operation maps to the specific limitations of the patent claims, particularly the requirements for "random generation" and "uniqueness" in the ’800 patent.
- Definitional Scope: The dispute may center on the construction of key claim terms. Can the "randomly generates" limitation in the ’800 patent be met by a pseudo-random or algorithmically generated code, and does "unique to the programming station" require a code to be tied to a single physical device or merely a single retail enterprise? The resolution of these scope questions will be critical to determining infringement.