DCT
2:15-cv-00297
Marshall Feature Recognition LLC v. Lorillard Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Marshall Feature Recognition, LLC (Texas)
- Defendant: Lorillard, Inc. (Delaware)
- Plaintiff’s Counsel: Austin Hansley PLLC.
- Case Identification: 2:15-cv-00297, E.D. Tex., 02/27/2015
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant transacts business in the district and has committed acts of patent infringement there, including by providing shareholder voting documents containing Quick Response codes to residents of the district.
- Core Dispute: Plaintiff alleges that Defendant’s use of Quick Response (QR) codes on its shareholder voting documents to provide access to online materials infringes two patents related to accessing electronic data via a familiar printed medium.
- Technical Context: The technology at issue involves using machine-readable codes on physical documents to link users to related digital content, a foundational concept for modern applications like QR codes.
- Key Procedural History: Both asserted patents have expired, and Plaintiff seeks only past damages. U.S. Patent No. 6,886,750 expired before the suit was filed. U.S. Patent No. 8,910,876 issued on December 16, 2014, and expired less than a month later on January 10, 2015, based on its priority date and a 230-day patent term adjustment. Consequently, the infringement period for the '876 patent is exceptionally short.
Case Timeline
| Date | Event |
|---|---|
| 1994-05-25 | Priority Date for '750 and '876 Patents |
| 2005-05-03 | '750 Patent Issue Date |
| 2014-05-25 | '750 Patent Expiration Date |
| 2014-12-16 | '876 Patent Issue Date |
| 2015-01-10 | '876 Patent Expiration Date |
| 2015-02-27 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,886,750 - "Method and Apparatus for Accessing Electronic Data Via a Familiar Printed Medium", issued May 3, 2005
The Invention Explained
- Problem Addressed: The patent's background section describes a "great need for improved user-interface technology" to help a "computer-phobic" population access computer-based electronic media, which was becoming more widespread with the advent of the "information superhighway" ('750 Patent, col. 1:36-45). Existing solutions like "talking books" were too limited, while "simulated books" were still intimidating and costly ('750 Patent, col. 2:5-46).
- The Patented Solution: The invention proposes a system that bridges the gap between familiar print media and complex electronic systems. It uses a low-cost printed document containing a "machine-recognizable feature" (e.g., a barcode). A user scans this feature with a recognition device, which sends a signal to a controller that in turn accesses and displays related electronic programming material from a local or remote source ('750 Patent, Abstract; Fig. 4). This allows users to access digital content using a simple, non-intimidating physical object as the starting point ('750 Patent, col. 1:59-64).
- Technical Importance: The technology aimed to make the vast resources of emerging digital media accessible to a broader, less technically-inclined audience by leveraging the universal familiarity of printed matter.
Key Claims at a Glance
- The complaint alleges infringement of "one or more claims" (Compl. ¶11) and quotes language that tracks method claim 126 (Compl. ¶10). The following analysis focuses on representative independent system Claim 1.
- Independent Claim 1: A system for displaying programming to a user, comprising:
- a printed commercial document having at least one machine recognizable feature;
- a feature recognition unit having associated therewith a means for recognizing said feature and a means for transmitting a coded signal in response to the recognition of said feature;
- an intelligent controller having associated therewith a means for accessing said programming material in response to receiving said coded signal; and
- a display unit for presenting said programming material.
U.S. Patent No. 8,910,876 - "Method and Apparatus for Accessing Electronic Data Via a Familiar Printed Medium", issued December 16, 2014
The Invention Explained
- Problem Addressed: The patent identifies the same accessibility problem as its parent '750 patent but adds a further objective: to "tailor the retrieval of electronic data by using a user profile" ('876 Patent, col. 2:65-67).
- The Patented Solution: This invention enhances the print-to-digital system by incorporating personalization. It describes a method where, after a machine-readable feature is recognized, the system accesses not just the associated content but also a "user profile comprising a user preference" ('876 Patent, col. 14:1-20). It then selects specific programming material based on that preference before delivering it to the user, thereby providing more relevant, tailored information ('876 Patent, Abstract; Fig. 10).
- Technical Importance: This patent describes the addition of personalization to the core print-to-digital linking technology, a concept that would become central to targeted advertising and content delivery on the web.
Key Claims at a Glance
- The complaint alleges infringement of "one or more claims" (Compl. ¶19) and provides a summary of a method claim that appears to be based on the invention (Compl. ¶18). The following analysis focuses on issued independent method Claim 1.
- Independent Claim 1: A method for displaying selected programming material on a user device, comprising the steps of:
- recognizing the machine recognizable feature of the printed matter using a feature recognizing device coupled to the user device;
- identifying encoded data associated with the machine recognizable feature of the printed matter;
- transmitting, using the user device, the encoded data associated with the machine recognizable feature to a remote server;
- receiving programming material from the remote server selected from a plurality of programming materials associated with the machine recognizable feature based on said user preference; and
- displaying the selected programming material on a display.
III. The Accused Instrumentality
Product Identification
"Defendant's shareholder voting documents containing Quick Response codes, and the use thereof" (Compl. ¶¶ 11, 19).
Functionality and Market Context
The complaint alleges that Defendant provides, distributes, and advertises shareholder voting documents that contain QR codes (Compl. ¶6). The functionality, as implicitly described, involves a shareholder using a device to scan the QR code on the physical document, which in turn provides access to electronic information related to shareholder voting (Compl. ¶¶ 6, 11). The complaint alleges Defendant "solicits shareholders to use the shareholder voting documents" in this manner (Compl. ¶6). No further details on the technical operation or market context of the accused instrumentality are provided.
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'750 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a printed commercial document having at least one machine recognizable feature | Defendant's shareholder voting documents containing Quick Response (QR) codes. | ¶11 | col. 13:9-11 |
| a feature recognition unit having associated therewith a means for recognizing said feature and a means for transmitting a coded signal... | A shareholder's device (e.g., smartphone with a camera and QR reader app) used to scan the QR code and transmit the encoded data. The complaint alleges Defendant "provides methods and systems" and "solicits shareholders to use" them. | ¶¶6, 10-11 | col. 5:45-54 |
| an intelligent controller having associated therewith a means for accessing said programming material in response to receiving said coded signal | The remote server that receives the request initiated by the QR code scan and provides the electronic voting materials. | ¶¶10-11 | col. 6:22-35 |
| a display unit for presenting said programming material | The screen of the shareholder's device used to view the electronic voting materials. | ¶¶10-11 | col. 6:3-16 |
'876 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| recognizing the machine recognizable feature of the printed matter using a feature recognizing device... | A shareholder scanning the QR code on the voting document using their personal device. | ¶19 | col. 7:42-51 |
| identifying encoded data associated with the machine recognizable feature... | The user's device decoding the URL or other data contained within the QR code. | ¶18 | col. 10:1-12 |
| transmitting, using the user device, the encoded data... to a remote server | The user's device making an electronic request to the remote server indicated by the decoded QR code data. | ¶18 | col. 10:12-21 |
| receiving programming material from the remote server selected... based on said user preference | The complaint does not provide sufficient detail for analysis of this element. It alleges a system for accessing data but offers no facts suggesting that the retrieved shareholder material is selected from a plurality of options based on a stored user preference. | ¶¶18-19 | col. 14:12-16 |
| displaying the selected programming material on a display | The shareholder's device displaying the retrieved electronic voting information. | ¶18 | col. 10:7-12 |
Identified Points of Contention
- Scope Questions: For the '750 patent system claim, a central question is whether Defendant's act of providing a printed document with a QR code constitutes direct infringement of a claim requiring a complete system that includes a recognition unit, controller, and display, which are not provided by Defendant. The complaint alleges direct infringement but its factual allegations may also support a theory of indirect infringement, which is not explicitly pleaded (Compl. ¶11).
- Technical Questions: For the '876 patent, the infringement analysis raises the question of whether the accused system performs the key claimed function of personalization. The complaint provides no factual allegations that the shareholder voting system selects content "based on said user preference" as required by Claim 1, creating a potential mismatch between the claim language and the accused functionality.
V. Key Claim Terms for Construction
"printed commercial document" ('750 Patent, Claim 1)
- Context and Importance: The accused instrumentality is a "shareholder voting document" (Compl. ¶11). The viability of the infringement claim depends on whether this type of document falls within the scope of a "commercial document" as used in the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification and claims provide numerous and varied examples of "commercial documents," including a tag, decal, invoice, receipt, credit card, identification card, newsletter, and merchandise coupon ('750 Patent, Claims 2-10, 13, 21). This diverse list suggests the term was intended to be interpreted broadly to cover many forms of documents used in business contexts.
- Evidence for a Narrower Interpretation: The patent’s summary and specific embodiments frequently frame the invention in the context of "shop-at-home services," "advertising brochure[s]," and other materials directly related to sales or marketing ('750 Patent, col. 4:9-19; col. 9:8-13). An argument could be made that the term implies a document with a transactional or promotional purpose, which a shareholder voting document may not primarily serve.
"user preference" ('876 Patent, Claim 1)
- Context and Importance: This term is the central feature of the '876 patent, distinguishing it from the earlier '750 patent. The infringement allegation against the '876 patent hinges on whether the accused shareholder system uses any form of "user preference" to select content. Practitioners may focus on this term because the complaint lacks any specific factual allegations to support its presence in the accused system.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent claims do not define the term. One could argue that any system that recognizes a specific user (e.g., via a login to a shareholder portal) and provides them with their unique voting materials is implicitly using a "preference" (i.e., the preference to see one's own information).
- Evidence for a Narrower Interpretation: The specification provides detailed examples of user preferences, such as selecting dating partners based on age and education, or choosing travel packages for "child-friendly resorts with water parks" ('876 Patent, col. 9:36-49; col. 10:10-14). These examples suggest an affirmative selection of categories or attributes by the user, which may be a more specific function than merely identifying a user to provide a standard, non-customized document.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead separate counts for induced or contributory infringement. However, it alleges that Defendant "solicits shareholders to use" the accused documents, which may lay a foundation for a later argument of inducement (Compl. ¶6).
- Willful Infringement: The complaint does not contain an explicit allegation of willful infringement. It requests a declaration that the case is "exceptional" and an award of attorneys' fees pursuant to 35 U.S.C. §285, but does not allege facts regarding pre- or post-suit knowledge of the patents (Compl., Prayer for Relief ¶C).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue for the '750 patent will be one of infringement liability: can a party that provides only one component of a claimed system (the printed document with a code) be held liable for directly infringing the entire system claim, or is the more appropriate theory one of indirect infringement, which has not been formally pleaded?
- A key evidentiary question for the '876 patent will be one of functional performance: does the accused shareholder voting system perform the claimed step of "selecting programming material... based on said user preference"? The lack of specific factual allegations supporting this central limitation in the complaint suggests this will be a primary point of dispute.