Multimodal LLC v. Fortune Brands Innovations Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Multimodal LLC (Delaware)
  • Defendant: Fortune Brands Innovations, Inc. (South Carolina)
  • Plaintiff’s Counsel: Garibian Law Offices, P.C.; Rabicoff Law LLC
• Case Identification: 2:23-cv-02509, E.D. Pa., 06/30/2023
• Venue Allegations: Venue is asserted based on Defendant maintaining an established place of business in the Eastern District of Pennsylvania.
• Core Dispute: Plaintiff alleges that unspecified products made by Defendant infringe a patent related to an object-recognition lock that uses an object's surface texture as a key.
• Technical Context: The technology relates to biometric and object-based security systems, which replace traditional keys or passwords with unique physical characteristics for authentication.
• Key Procedural History: The complaint does not mention prior litigation or administrative proceedings. It asserts that service of the complaint itself provides Defendant with actual knowledge of infringement for the purposes of willfulness and inducement allegations.

Case Timeline

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

U.S. Patent No. 7,045,763 - "Object-recognition lock"

Issued May 16, 2006

The Invention Explained

• Problem Addressed: The patent's background section identifies the drawbacks of conventional security methods. Mechanical keys can be lost or require inconvenient spare copies, while combination locks require memorization and can be "picked." Furthermore, existing high-tech "pattern-recognition systems," such as those scanning a human eye, are described as expensive and often limited in the types of patterns they can recognize (e.g., only eyes) (’763 Patent, col. 1:11-59).
• The Patented Solution: The invention proposes a lock system that uses an optical scanner to analyze the unique "micro-textured surface" of an ordinary object, such as a rock, a piece of wood, or a person's palm (’763 Patent, col. 5:20-24). A controller generates an image signal from the scan, compares the object's surface texture to a pre-stored reference texture, and actuates the lock mechanism if they match (’763 Patent, Abstract). This allows virtually any object with a sufficiently detailed surface to function as a unique key.
• Technical Importance: The technology aimed to provide a security system that was more flexible and less expensive than high-end biometric scanners while being more secure and convenient than traditional key-and-lock systems (’763 Patent, col. 7:35-50).

Key Claims at a Glance

• The complaint does not explicitly identify which claims it asserts, instead referring to "exemplary claims" in an external exhibit not attached to the complaint (Compl. ¶11). The patent's independent claims are 1, 8, 13, 16, 18, 20, and 21. Claim 1 is representative of the method claims.
• Independent Claim 1 (Method):
  • scanning an object for at least one surface texture of the object;
  • generating at least one image signal indicative of the at least one surface texture;
  • comparing the at least one surface texture of the object indicated by the at least one image signal with a reference texture;
  • actuating the lock if the at least one surface texture of the object matches the reference texture;
  • wherein the comparison occurs at a "micro-level in which depths of features of the surface texture and features of the reference texture are in a range of 5 microns to 500 microns."
• The complaint does not state whether it reserves the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

The complaint does not name any specific accused products in its main body. It refers to "Exemplary Defendant Products" that are purportedly identified in charts within "Exhibit 2" (Compl. ¶11, ¶16). This exhibit was not filed with the complaint.

Functionality and Market Context

The complaint does not provide sufficient detail for analysis of the accused products' functionality or market position.

IV. Analysis of Infringement Allegations

The complaint does not contain claim charts or specific factual allegations mapping claim elements to accused product features. Instead, it incorporates by reference an external "Exhibit 2," which was not provided (Compl. ¶14, ¶17). The complaint makes only conclusory allegations that the "Exemplary Defendant Products practice the technology claimed by the '763 Patent" and "satisfy all elements of the Exemplary '763 Patent Claims" (Compl. ¶16).

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Technical Questions: A central question will be whether the accused products, once identified, actually perform the specific function required by the claims. Specifically, what evidence will Plaintiff provide that the accused products "scan," "generate an image signal," and "compare" a "surface texture" based on topographical features at a "micro-level" within the claimed range of 5 to 500 microns? (’763 Patent, col. 7:65-8:2). The case may turn on whether the accused technology operates on a different principle (e.g., color analysis, 2D pattern matching, or shape recognition) that falls outside the claimed method.
  • Scope Questions: The dispute may involve whether the accused products' mode of operation falls within the scope of the patent's claims. For example, if an accused product scans a fingerprint, a question may arise as to whether its analysis of ridges and valleys for identification purposes constitutes a comparison of "surface texture" as that term is used in the patent, or a distinct form of biometric analysis.

V. Key Claim Terms for Construction

• The Term: "surface texture"

• Context and Importance: This term is the foundation of the invention, defining the characteristic used for authentication. Its construction will determine the types of objects and scanning methods covered by the patent and will be critical to the infringement analysis.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification lists a wide variety of potential objects, including "a rock or stone, a body part (e.g., an elbow, palm, or finger), wood, metal, or plastic objects" (’763 Patent, col. 5:20-24). This could support an interpretation covering a broad range of natural and artificial surfaces.
  • Evidence for a Narrower Interpretation: The specification consistently links "surface texture" to a "micro-textured surface" comprising "very small ridges and valleys" and measures "variations in the height and/or depth of various features" (’763 Patent, col. 4:8-16). Independent claim 1 explicitly requires this comparison to be at a "micro-level" with feature depths in the "range of 5 microns to 500 microns" (’763 Patent, col. 8:1-2). This language could support a narrower construction limited to three-dimensional topographical data, as opposed to two-dimensional patterns or other surface characteristics.

• The Term: "matches"

• Context and Importance: This term defines the threshold for successful authentication and actuation of the lock. Its definition is crucial for determining infringement, as it sets the required degree of similarity between the scanned object and the reference texture.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent does not specify a required algorithm for determining a match, which may suggest that any method of comparison that serves to distinguish an authorized object from an unauthorized one could fall within the scope. The patent states that a "definition for matching is established for use by said controller before said controller compares said surface texture with said reference texture" (’763 Patent, col. 8:61-65).
  • Evidence for a Narrower Interpretation: The specification provides a specific example where a user "may specify that at least 80% of the surface texture must match the reference texture before the lock assembly can be actuated" (’763 Patent, col. 7:15-18). A party could argue this example cabins the meaning of "matches" to a quantifiable, percentage-based threshold of identity.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendant induces infringement by distributing "product literature and website materials" that instruct end users on how to use the products in an infringing manner (Compl. ¶14). The allegation is also based on knowledge gained after the complaint was served (Compl. ¶15).
• Willful Infringement: The complaint bases its willfulness allegation on alleged post-suit conduct. It claims that by continuing to infringe after receiving the complaint and its attached claim charts, Defendant has actual knowledge of its infringement (Compl. ¶13-14).

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

• A primary issue will be one of evidentiary proof: Given the complaint’s lack of specific factual allegations, the case will depend heavily on what discovery reveals. A threshold question is whether Plaintiff can produce evidence that Defendant’s products perform a comparison of "surface texture" at the "micro-level" (5-500 microns) as explicitly required by the patent's independent claims, or if the accused technology functions on an entirely different principle.
• The case will also turn on a question of claim construction: The court's interpretation of "surface texture" will be pivotal. The central legal dispute will likely be whether this term is limited to the three-dimensional, topographical "micro-textured surface" described in the specification, or if it can be read more broadly to cover other forms of surface pattern recognition that may be used in Defendant's products.