DCT
3:19-cv-00407
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: Klarquist Sparkman, LLP
- Case Identification: 3:19-cv-00407, D. Or., 03/18/2019
- Venue Allegations: Venue is asserted based on Defendant MTI having its principal place of business in the District of Oregon.
- Core Dispute: Plaintiff alleges that Defendant’s retail security tethers, which both power and secure display merchandise, infringe patents related to a merchandise security system featuring a removable reel with an integrated electrical coupling.
- Technical Context: The technology addresses security systems for high-value electronic merchandise in retail settings, which must allow customer interaction while preventing theft and providing power to the device.
- Key Procedural History: The complaint notes that the parties have been involved in patent litigation since at least December 2015 and are also involved in post-grant proceedings at the USPTO. The '954 Patent is a continuation of the '787 Patent. The USPTO's Official Gazette indicates that the assignee has disclaimed all of claims 19 and 42-44 of the '787 Patent and all of claims 24, 25, and 27-29 of the '954 Patent.
Case Timeline
| Date | Event |
|---|---|
| 2012-08-30 | Earliest Priority Date ('787 and '954 Patents) |
| 2015-12-15 | Date from which prior litigation between parties is alleged |
| 2017-11-28 | Issue Date (U.S. Patent No. 9,830,787) |
| 2018-08-21 | Issue Date (U.S. Patent No. 10,055,954) |
| 2019-03-18 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,830,787 - “Merchandise Security System Including Retractable Alarming Power Cord,” issued November 28, 2017
The Invention Explained
- Problem Addressed: The patent background describes prior art security systems for retail electronics that require complex wiring or a plurality of different adapter cables to connect various merchandise to a power source, making installation and maintenance difficult ('787 Patent, col. 1:24-39).
- The Patented Solution: The invention is a merchandise security system where a retractable reel, holding an alarming power cord, is removably housed within a display stand. The key feature is a modular design where the removable reel has an electrical coupling on its outer surface that engages a corresponding coupling inside the housing, allowing the entire reel and cord assembly to be replaced easily ('787 Patent, Abstract; col. 5:58-6:1). This is illustrated in Figure 2, which shows electrical traces (47) on the exterior of the reel (44) designed to mate with electrical contacts (67) inside the housing (50) ('787 Patent, Fig. 2).
- Technical Importance: This approach simplifies the maintenance and versatility of retail security displays by allowing for quick replacement of worn or damaged cord assemblies without re-wiring the entire display stand ('787 Patent, col. 4:12-16).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 ('787 Patent, col. 8:46-59; Compl. ¶26).
- Essential elements of claim 1:
- A cord configured to be coupled to the electronic item of merchandise.
- A reel configured to store at least a portion of the cord, the reel comprising at least one electrical coupling on an outer surface thereof.
- A housing defining an interior for receiving the reel, wherein the reel is configured to be removably inserted within the housing.
- The housing comprises at least one electrical coupling configured to engage with and electrically connect to the at least one electrical coupling of the reel when the reel is received within the housing.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 10,055,954 - “Merchandise Security System Including Retractable Alarming Power Cord,” issued August 21, 2018
The Invention Explained
- Problem Addressed: As a continuation of the '787 Patent, the '954 Patent addresses the same technical problem of creating a more simplified and modular security and power system for retail merchandise displays ('954 Patent, col. 1:24-39).
- The Patented Solution: The solution is also a security system with a removable reel that electrically connects to a housing. The specification describes embodiments where this connection is achieved via electrical traces on the reel and housing surfaces, powered by a printed circuit board within the housing ('954 Patent, col. 6:41-61). This design facilitates a clean, wire-free electrical transfer from the stationary housing to the rotatable, removable reel.
- Technical Importance: This modular design with integrated electrical contacts allows for a robust and easily serviceable system for securing and powering a wide variety of electronic devices in a retail environment ('954 Patent, col. 5:42-57).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 ('954 Patent, col. 8:50-61; Compl. ¶57).
- Essential elements of claim 1:
- A reel configured to store at least a portion of a cord, the reel comprising at least one electrical coupling on an outer surface thereof.
- A housing defining an interior for receiving the reel, wherein the reel is configured to be removably inserted within the housing.
- The housing comprises at least one electrical coupling configured to engage with and electrically connect to the at least one electrical coupling of the reel when the reel is received within the housing.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The complaint identifies the Accused Products as security systems sold under names including "Freedom Micro," "Round Freedom Micro," "Freedom Micro DI," "AirTether," and "SteelTether" (Compl. ¶16).
Functionality and Market Context
- The Accused Products are alleged to be merchandise security systems that include a cord attached to merchandise, a reel for retracting and storing the cord, and a housing for the reel (Compl. ¶15). The complaint asserts that the reel can be inserted into and removed from the housing and that the reel has an electrical coupling on its outer surface that engages with a corresponding coupling on the interior of the housing to establish an electrical connection (Compl. ¶15). The complaint includes a photograph of the accused "Freedom Micro" reel and the interior of its housing, appearing to show these corresponding electrical couplings (Compl. p. 5). The complaint alleges these products are used by retailers in the United States to secure merchandise from theft (Compl. ¶17, ¶18).
IV. Analysis of Infringement Allegations
’787 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a cord configured to be coupled to the electronic item of merchandise; | The Accused Products include a cord attached to an item of merchandise. A visual shows the "Freedom Micro" with an attached cord. | ¶27, p. 4 | col. 6:4-10 |
| a reel configured to store at least a portion of the cord thereon, the reel comprising at least one electrical coupling on an outer surface thereof; | The Accused Products include a reel for retracting and storing the cord, which has at least one electrical coupling on its outer surface. A visual shows the reel with an apparent coupling. | ¶27, p. 5 | col. 6:53-55 |
| and a housing defining an interior for receiving the reel... the housing comprising at least one electrical coupling configured to engage with and electrically connect to the at least one electrical coupling of the reel... | The Accused Products include a housing to receive the reel, with an interior electrical coupling that engages the reel's coupling when inserted. A visual shows the housing's interior coupling. | ¶27, p. 5 | col. 6:49-53 |
’954 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a reel configured to store at least a portion of a cord thereon, the reel comprising at least one electrical coupling on an outer surface thereof; | The Accused Products include a reel for storing a cord, and this reel has an electrical coupling on its outer surface. | ¶58 | col. 6:53-55 |
| and a housing defining an interior for receiving the reel... the housing comprising at least one electrical coupling configured to engage with and electrically connect to the at least one electrical coupling of the reel when the reel is received within the housing. | The Accused Products have a housing designed to receive the reel, and this housing has an interior electrical coupling that connects to the reel's coupling. | ¶58 | col. 6:49-53 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the structure identified as an "electrical coupling" on the accused products falls within the scope of that term as used in the patents. The patents disclose both direct contact (electrical traces) and inductive (transformer) couplings, raising the question of how broadly the term should be construed ('954 Patent, col. 4:43-48, col. 6:49-59).
- Technical Questions: The infringement analysis will depend on evidence demonstrating the precise structure and function of the interface between the accused reel and housing. A key question is whether the structures shown in the complaint's photograph (Compl. p. 5) function to "engage with and electrically connect" in the manner required by the claims, particularly how power or signals are transferred across the rotating interface.
V. Key Claim Terms for Construction
- The Term: "electrical coupling"
- Context and Importance: This term appears in both asserted independent claims and describes the critical interface between the removable reel and the stationary housing. The entire infringement case may hinge on whether the specific mechanism used in the accused products meets the definition of this term. Practitioners may focus on this term because it is the core of the asserted novelty and the primary point of contact between the claimed invention and the accused device's structure.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses multiple distinct embodiments for this connection. It describes an inductive coupling via electrical transformers (17, 27) as one possibility ('954 Patent, col. 4:43-48) and a direct contact coupling via electrical traces and terminals (47, 67, 66) as another ('954 Patent, col. 6:49-59). A party could argue that "electrical coupling" should be construed broadly to encompass any structure that performs the function of electrically connecting the reel and housing.
- Evidence for a Narrower Interpretation: A party might argue that the term should be limited to the specific embodiments shown, such as the circular electrical traces depicted in Figure 2 ('954 Patent, Fig. 2; col. 6:59-61). They could point to the detailed description of "electrical terminals 66" and "electrical traces 67" to argue that the term implies a specific type of direct, physical contact rather than any form of electrical connection.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both inducement and contributory infringement. The inducement claim is based on allegations that MTI provides instructions, trains customers, and has observed its customers using the Accused Products in an infringing manner (Compl. ¶47-49, ¶78-80). The contributory infringement claim is based on allegations that the Accused Products are not staple articles of commerce and are especially made for an infringing use, having no substantial non-infringing purpose (Compl. ¶34-37, ¶65-68).
- Willful Infringement: The complaint alleges that MTI had pre-suit knowledge of the patents-in-suit and their underlying applications, asserting that MTI has monitored InVue's patent filings due to ongoing litigation between the parties since 2015 (Compl. ¶19, ¶21-23). While not explicitly pleading "willfulness," these allegations of pre-suit knowledge, combined with the request for enhanced damages and attorneys' fees in the prayer for relief, form the basis for a potential willfulness claim (Compl. p. 14).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and technical scope: can the term "electrical coupling," as defined by the patent's specification and prosecution history, be construed to read on the specific electrical interface between the reel and housing in Defendant's "Freedom Micro" line of products? The resolution will depend on whether the court adopts a broad functional definition or a narrower one tied to the specific embodiments disclosed.
- A second key question will be one of knowledge and intent: given the alleged history of litigation and monitoring between the parties, what evidence supports the allegation that MTI knew of the patents and intended for its customers to infringe? This will be central to the claims for indirect infringement and any potential finding of enhanced damages.