Rothschild Connected Devices Innovations LLC v. Garmin Intl Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Rothschild Connected Devices Innovations, LLC (Texas)
  • Defendant: Garmin International, Inc. (Kansas)
  • Plaintiff’s Counsel: Kizzia Johnson PLLC
• Case Identification: 2:17-cv-00158, E.D. Tex., 02/24/2017
• Venue Allegations: Plaintiff alleges venue is proper because Defendant is deemed to reside in the district and has committed acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s customizable wearable activity trackers and associated software infringe patents related to personalizing consumer products via a remote server.
• Technical Context: The patents relate to systems where a user establishes preferences via a network, which are then used to customize a physical product at the point of use.
• Key Procedural History: U.S. Patent 8,788,090 is a continuation of the application that issued as U.S. Patent 7,899,713, establishing a shared specification and priority date. Notably, after the filing of this complaint, the U.S. Patent and Trademark Office issued an Inter Partes Review Certificate for the ’090 Patent (IPR2016-00443), cancelling claims 1-8, which includes the sole independent claim asserted in this litigation.

Case Timeline

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

U.S. Patent No. 7,899,713 - "System and Method for Creating a Personalized Consumer Product," issued March 1, 2011

The Invention Explained

• Problem Addressed: The patent's background describes a market where consumers are given wider choices for products like beverages and shampoos, but these products are not specifically tailored to the individual needs of millions of consumers (’713 Patent, col. 1:11-38).
• The Patented Solution: The invention proposes a networked system that allows a user to define their personal preferences on a remote server, which then transmits a "formulation" to a local product or dispenser. This product then mixes various elements (e.g., fluids and/or solids) according to the user's stored preferences to create a customized final product (’713 Patent, Abstract; col. 2:16-22). The system architecture shown in Figure 1 illustrates a terminal, a server, and a product communicating over a network (’713 Patent, Fig. 1).
• Technical Importance: The technology represents a method for enabling mass customization of consumable goods, linking a user's centrally-stored digital profile with the physical creation of a product (’713 Patent, col. 1:45-57).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 16 (Compl. ¶13).
• Essential elements of independent claim 16 include:
  • A remote server with a database storing a user's product preference.
  • A terminal for transmitting user and product identity to the server and receiving the preference from the server.
  • A communications network coupling the server and terminal.
  • A first communication module located within the product, which is in communication with the terminal.
  • The server is configured to receive identities, retrieve the preference, and transmit it to the product's communication module via the terminal.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 8,788,090 - "System and Method for Creating a Personalized Consumer Product," issued July 22, 2014

The Invention Explained

• Problem Addressed: As a continuation, the ’090 patent addresses the same problem of providing consumers with products specifically tailored to their individual needs, which off-the-shelf variants cannot fully satisfy (’090 Patent, col. 1:21-48).
• The Patented Solution: The solution is again a networked system for product personalization. Claim 1 of this patent describes a system comprising a remote server and a communication module within the product that is "in communication with the remote server." The server receives user and product identifiers, retrieves the user's preferences, and transmits those preferences directly to the product's communication module (’090 Patent, Abstract; col. 3:1-11).
• Technical Importance: The technology provides an architecture for on-demand, personalized product formulation driven by a user's network-based preferences (’090 Patent, col. 1:55-62).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 1 (Compl. ¶29).
• Essential elements of independent claim 1 include:
  • A remote server configured to store a product preference for a user.
  • A first communication module within the product and "in communication with the remote server."
  • The server is configured to receive product and user identity, retrieve the preference from its database, and transmit the preference to the product's first communication module.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The complaint identifies the accused instrumentality as a system ("the Product") comprising the Garmin "Vivoactive HR" activity tracker and the associated "Garmin Connect mobile app" (Compl. ¶14, ¶30).

Functionality and Market Context

• The system allows a user to remotely customize the operation and software of the Vivoactive HR device (Compl. ¶14, ¶30).
• The system includes a remote "Garmin Connect server" that stores "product preference (e.g., software updates, training plans, and device settings)" for registered users (Compl. ¶15, ¶31).
• A user logs into the Garmin Connect mobile app on a smartphone, which acts as the "terminal" for communicating with the server (Compl. ¶17).
• Device settings, updates, and plans are transmitted from the Garmin server to the smartphone and subsequently synced to the Vivoactive HR device, which allegedly contains a Bluetooth communication module (Compl. ¶16, ¶19-20, ¶32-34).
• The complaint alleges Garmin sells these systems as "activity trackers" and "smart appliances" (Compl. ¶14, ¶30).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’713 Patent Infringement Allegations

’090 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A primary issue for both patents is whether the claimed "product preference" and "mixing" of "elements" can be interpreted to cover the accused functionality. The patent specifications heavily emphasize the physical mixing of "fluids and/or solids" for products like shampoos and beverages (’713 Patent, Abstract; col. 2:46-50). The infringement allegations, however, map these terms to "software updates, training plans, and device settings" for a wearable electronic device (Compl. ¶15, ¶31). This raises the question of whether the claims' scope extends beyond physical compositions to software and data configuration.
  • Technical Questions: For the ’090 Patent, a key dispute may arise over the limitation "a first communication module within the product and in communication with the remote server." The complaint alleges an indirect communication path: server → smartphone → tracker (Compl. ¶34). The court would need to determine if this indirect, multi-hop connection satisfies the "in communication with" requirement, or if the claim requires a more direct network link between the product and the server.
  • Claim Viability: A dispositive issue for the ’090 Patent is the cancellation of asserted claim 1 (and dependent claims 2-8) during Inter Partes Review, which occurred after the complaint was filed. This action by the USPTO raises the question of whether a viable cause of action under the ’090 patent remains.

V. Key Claim Terms for Construction

• The Term: "product preference" (asserted in ’713 Claim 16 and ’090 Claim 1)

  • Context and Importance: The definition of this term is fundamental. The dispute will turn on whether "product preference" is limited to parameters for physical mixtures, as detailed in the specification, or if it can broadly encompass software configurations, user settings, and training plans for an electronic device.
  • Intrinsic Evidence for a Broader Interpretation: The claim language itself does not explicitly limit "product" or "preference" to a physical substance. An argument could be made that for a software-driven product like an activity tracker, the user's preferred settings and applications are its "product preference."
  • Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly frames the invention in the context of customizing "products containing solids and/or fluids" (’713 Patent, Abstract) and provides examples such as toothpaste, shampoos, conditioners, beverages, and soaps (’713 Patent, col. 2:48-50). This context may support a narrower construction tied to the physical composition of consumable goods.

• The Term: "in communication with the remote server" (’090 Claim 1)

  • Context and Importance: This term is critical to the infringement analysis of the ’090 Patent. Practitioners may focus on this term because the accused system architecture (server → terminal → product) does not appear to feature a direct communication link between the product (tracker) and the server.
  • Intrinsic Evidence for a Broader Interpretation: The term itself does not forbid intermediaries. It could be argued that as long as data is successfully exchanged between the server and the product's module, they are "in communication," regardless of the path.
  • Intrinsic Evidence for a Narrower Interpretation: Figure 1 of the patent, incorporated by reference into the ’090 patent, depicts both the server (104) and the product (400, a beverage dispenser) as having distinct connections to the communications network (106) (’090 Patent, Fig. 1). This could suggest that the patent contemplates a system where the product itself has the capability to communicate over the network, rather than relying exclusively on a terminal as an intermediary.

VI. Other Allegations

• Indirect Infringement: The complaint does not plead a separate count for indirect infringement. However, it alleges that Defendant "sells, offers to sell, and/or uses systems" (Compl. ¶14) and that the "Product allows a user to remotely customize" its functions (Compl. ¶14). These allegations regarding the sale of a system designed for use by consumers in an infringing manner could form a basis for a future claim of induced infringement, though the complaint currently lacks specific allegations of Defendant's knowledge and intent to induce.
• Willful Infringement: The complaint does not contain any allegations of pre- or post-suit knowledge of the patents, and therefore does not plead facts to support a claim for willful infringement.

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

1. A core issue will be one of definitional scope: Can the claims, which originate from a disclosure focused on the network-enabled physical mixing of consumable products like beverages, be construed to cover the configuration of software, data, and settings on a wearable electronic device?
2. A second central issue, specific to the ’090 patent, will be one of architectural equivalence: Does the accused system’s indirect communication path from server-to-terminal-to-product meet the claim requirement that the product's communication module be "in communication with the remote server"?
3. Finally, a threshold procedural question is the viability of the '090 patent assertion: Given that the sole independent claim asserted from the ’090 patent has been cancelled by the USPTO in an Inter Partes Review, the court must determine if any cognizable claim for relief under that patent remains in this case.