DCT
2:19-cv-00209
Hillman Group Inc v. KeyMe LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: The Hillman Group Inc (Delaware)
- Defendant: Keyme LLC (Delaware)
- Plaintiff’s Counsel: Findlay Craft; Finnegan Henderson Farabow Garrett & Dunner LLP
- Case Identification: 2:19-cv-00209, E.D. Tex., 09/03/2019
- Venue Allegations: Venue is alleged to be proper based on Defendant’s commission of infringing acts and its maintenance of multiple regular and established places of business within the Eastern District of Texas, specifically citing the deployment of thirty or more key duplication kiosks in the district.
- Core Dispute: Plaintiff alleges that Defendant’s self-service key duplication kiosks infringe three patents related to the automated analysis, identification, and fabrication of keys.
- Technical Context: The technology concerns automated, self-service kiosks for key duplication, a market that aims to provide consumers with convenient alternatives to traditional locksmith services.
- Key Procedural History: The complaint notes that U.S. Patent No. 8,979,446 was previously asserted against Defendant in the District of Minnesota, a case that was dismissed without prejudice. During that litigation, an inter partes review (IPR) was instituted against the ’446 patent, resulting in the cancellation of numerous claims. The claims asserted in the present complaint are among those that survived the IPR proceeding. The complaint also alleges Defendant had knowledge of U.S. Patent No. 9,914,179 based on an Information Disclosure Statement it filed during the prosecution of a related application.
Case Timeline
| Date | Event |
|---|---|
| 2010-06-03 | Priority Date for ’446 and ’179 Patents |
| 2013-08-16 | Priority Date for ’474 Patent |
| 2015-03-17 | ’446 Patent Issued |
| 2015-03-30 | Defendant served with complaint in prior litigation involving ’446 Patent |
| 2015-05-07 | IPR Petition filed against ’446 Patent |
| 2016-11-14 | PTAB Final Written Decision in IPR for ’446 Patent |
| 2017-03-03 | Prior litigation involving ’446 Patent dismissed without prejudice |
| 2018-02-20 | PTO officially cancelled claims of ’446 Patent per IPR certificate |
| 2018-03-13 | ’179 Patent Issued |
| 2019-09-03 | ’474 Patent Issued |
| 2019-09-03 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,979,446 - Fully Automatic Self-Service Key Duplicating Kiosk
The Invention Explained
- Problem Addressed: The patent background describes a long-felt need for a fully automatic key duplication machine that does not require a trained human operator, making the process as simple for a consumer as using a vending machine (’446 Patent, col. 1:15-25).
- The Patented Solution: The invention is a self-service kiosk that automates the entire key duplication process. A customer inserts their key into an entry that accepts only the key’s blade, preventing the key from being lost inside the machine. An internal system then analyzes the key blade, determines the correct key blank type from an internal magazine, extracts that blank, and cuts the tooth pattern of the original key onto it before dispensing the new key to the customer (’446 Patent, Abstract; col. 3:55-4:20).
- Technical Importance: The technology provides a fully-contained, automated system for retail environments, aiming to increase consumer convenience and reduce the errors associated with manual key duplication processes.
Key Claims at a Glance
- The complaint asserts dependent Claim 22, which incorporates all limitations of independent Claim 1 (Compl. ¶¶ 26, 35).
- Essential elements of independent Claim 1 include:
- A kiosk housing with a customer interface for payment.
- A key-receiving entry configured to block the head of an inserted key, allowing only the blade to extend inside.
- A key analysis system to analyze the inserted blade and match it to a preselected key type.
- A key blank magazine storing blanks for the preselected key types.
- A key blank extraction system to retrieve the matched key blank.
- A key duplicating system to replicate the tooth pattern onto the extracted blank.
- A key-removal exit for customer access to the duplicated key.
- Claim 22 adds the requirement of "a guard adjacent said key-receiving entry to protect the head of a key protruding from said entry from accidental contact" (Compl. ¶37).
U.S. Patent No. 9,914,179 - Self Service Key Duplicating Machine with Automatic Key Model Identification System
The Invention Explained
- Problem Addressed: The patent identifies challenges in automated key duplication, where identifying the correct key model can be "difficult and erroneous" even for trained professionals due to the large number of similar key models, a problem compounded in automated systems (’179 Patent, col. 2:1-5).
- The Patented Solution: The invention provides a key duplicating machine that automates the identification process by optically detecting the "cross-sectional profile" of a master key. Based on this detected profile, the machine’s loading system automatically selects the correct matching key blank from an internal storage housing and then proceeds to cut it (’179 Patent, Abstract; col. 2:55-67).
- Technical Importance: This approach seeks to improve the accuracy of automated key duplication by focusing on a key’s unique cross-sectional profile as the primary identifier for selecting the correct blank.
Key Claims at a Glance
- The complaint asserts independent Claim 9 (Compl. ¶51).
- Essential elements of independent Claim 9 include:
- A storage housing for key blanks of different cross-sectional profiles.
- A blade cross-section detector configured to automatically detect the cross-sectional profile of a master key.
- A blank loading system configured to automatically select a key blank whose profile matches the detected profile.
- A key cutting system configured to cut the selected blank to duplicate the master key's tooth pattern.
U.S. Patent No. 10,400,474 - Identification Module for Key Making Machine
- Technology Synopsis: This patent addresses the complexity and potential for error in automated key duplication by disclosing an "identification module" for a key making machine (Compl. ¶65; ’474 Patent, col. 2:8-26). The solution involves a module with a slot that receives only the shank of an existing key, an imaging system to determine the key's bitting pattern and/or channel profile, and a transponder sensor to detect and read codes from keys equipped with transponders, such as modern car keys (’474 Patent, Abstract).
- Asserted Claims: Independent claims 1, 11, and 20 (Compl. ¶64).
- Accused Features: The complaint accuses KeyMe kiosks of infringing by incorporating an identification system with a shank-only key slot, a transponder sensor for copying car keys and fobs, an imaging system for determining key features, and a user interface with a touch screen (Compl. ¶¶ 68-81). The complaint further alleges infringement of claims directed to a system with a remote fabrication unit connected via wireless communication (Compl. ¶¶ 82-102).
III. The Accused Instrumentality
Product Identification
The accused products are self-service key duplicating kiosks marketed under the names “KeyMe” or “Locksmith in a Box” (Compl. ¶23).
Functionality and Market Context
The complaint describes the accused products as self-service kiosks that use a touchscreen interface to guide a customer through the key duplication process (Compl. ¶39). The kiosks are alleged to use "computer vision and neural networks" with multiple cameras to scan a customer's key, generate a 3D image, and match it to a key type in its database (Compl. ¶¶ 41-42). The kiosks are further alleged to contain an internal magazine of key blanks, from which they autonomously select and cut a new key, eventually dropping the finished product into an exit for the customer to retrieve (Compl. ¶¶ 43, 45). The complaint also highlights the accused products’ alleged ability to copy car keys, including those with transponder chips and keyless fobs (Compl. ¶69).
IV. Analysis of Infringement Allegations
Claim Chart Summary: ’446 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a kiosk housing having a customer interface configure[d] to receive payment from a customer... | The Infringing Products include a kiosk housing and a customer interface with a touchscreen that accepts payment. | ¶39 | col. 21:13-16 |
| a key-receiving entry in said housing configured to receive at least a portion of the customer's key to be duplicated, wherein the key-receiving entry blocks insertion of the head of an inserted key so that only the blade of an inserted key extends into the kiosk housing | The kiosks have a key-receiving entry that allegedly blocks the key head, allowing only the blade to enter. This is supported by a website snapshot showing a KeyMe kiosk with an instruction to "INSERT KEY." | ¶40 | col. 21:17-23 |
| a key analysis system within said housing configured to analyze the blade of a key inserted...to determine whether the inserted key matches one of a group of preselected key types... | The kiosks use "computer vision and neural networks" with multiple cameras to scan the key, generate a 3D image, and match it to "existing information on various key types that the kiosk has collected." | ¶¶41-42 | col. 21:24-29 |
| a key blank magazine within said housing configured to store key blanks for each of said preselected key types | The kiosks are alleged to contain a storage magazine for key blanks because they do not require a user to insert a blank from outside the housing. | ¶43 | col. 21:30-32 |
| a key blank extraction system configured to extract from said magazine a key blank for the preselected key type... | The kiosks are alleged to have a system to extract the matched key blank, as they are described as operating "autonomously...without human involvement." | ¶43 | col. 21:33-37 |
| a key duplicating system within said kiosk configured to replicate the tooth pattern of the blade of said key...on the blade of said extracted key blank | The kiosks allegedly generate a 3D image of the key's teeth and are equipped to "print most common key types in just a few seconds." | ¶44 | col. 21:38-42 |
| a key-removal exit in said housing providing customer access to the key with the replicated tooth pattern for removal from the kiosk | The kiosks allegedly track the key's progress and drop it into a key-removal exit. A photograph of the exit on the front of the kiosk is referenced as evidence. | ¶45 | col. 21:43-47 |
Claim Chart Summary: ’179 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a storage housing configured to store key blanks of different cross-sectional profiles | The kiosks are alleged to contain a storage magazine for key blanks of different types, as they operate without requiring the user to supply a blank. | ¶55 | col. 17:26-28 |
| a blade cross-section detector configured to automatically detect a cross-sectional profile of a master key | The complaint alleges this functionality exists by citing to KeyMe's own patent (U.S. Patent No. 8,682,468), which describes a "key detector" that can detect geometric information including a key's "profile" or "milling pattern from a front view." | ¶56 | col. 17:29-31 |
| a blank loading system configured to automatically select...a key blank whose cross-sectional profile matches the automatically-detected cross-sectional profile... | The kiosks are alleged to autonomously select an appropriate key blank. Evidence is again drawn from KeyMe's '468 patent, which depicts using a cross-sectional profile to identify and retrieve a matching key blank. The complaint includes a figure from KeyMe's patent showing an imaging device selecting between different key types in a magazine. | ¶¶55, 58 | col. 17:32-37 |
| a key cutting system configured to cut the selected key blank to duplicate a key tooth pattern of the master key | The kiosks are alleged to generate a 3D image of the key's teeth and then cut a duplicate key based on that data. | ¶61 | col. 17:38-41 |
Identified Points of Contention:
- Evidentiary Questions: For the ’179 Patent, the complaint's allegations for the "blade cross-section detector" rely almost exclusively on descriptions from Defendant KeyMe’s own unrelated patents and patent applications (Compl. ¶¶ 56-58). A central question will be what factual evidence, beyond these documents and general marketing statements, Plaintiff can produce to demonstrate that the accused kiosks actually practice the specific cross-section detection methods described.
- Scope Questions: For the ’446 Patent, the dependent claim 22 requires a "guard...to protect the head of a key." The complaint points to a screenshot of the kiosk's front panel (Compl. ¶48, Ex. O). The dispute may turn on whether the physical structures on the accused kiosk meet the structural and functional requirements of the term "guard" as construed by the court.
V. Key Claim Terms for Construction
The Term: "key-receiving entry... blocks insertion of the head of an inserted key so that only the blade of an inserted key extends into the kiosk housing" (’446 Patent, Claim 1).
Context and Importance: This functional language is central to the patent's claimed safety and operational design. The infringement analysis will depend on whether the accused kiosk's key slot performs this specific blocking function in a manner consistent with the claim's scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify a particular mechanism for blocking, suggesting any structure that achieves the functional result could infringe. The specification describes the benefit broadly as preventing the key from being "lost in the kiosk" (’446 Patent, col. 4:1-3).
- Evidence for a Narrower Interpretation: The specification describes a specific embodiment where the key entry slot is "dimensioned to block the head portion of the key from entering the kiosk" (’446 Patent, col. 5:62-64). This could support a narrower construction tied to the physical dimensions of the slot itself.
The Term: "blade cross-section detector" (’179 Patent, Claim 9).
Context and Importance: This term is the core of the asserted claim of the ’179 patent. Infringement hinges on proving the accused kiosks contain a component or system that performs this function. Practitioners may focus on this term because the complaint's primary evidence for its existence is extrinsic evidence from the defendant's own patent filings, rather than direct intrinsic definition.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim term itself is functional. The specification describes the detector's function—detecting a cross-sectional profile—without being strictly limited to a single embodiment, stating it "may be accomplished in any of a number of ways" (’179 Patent, col. 12:47-48).
- Evidence for a Narrower Interpretation: A specific embodiment describes using sliding elements with predefined profiles that physically engage the key blade to determine its cross-section (’179 Patent, col. 13:3-15). This could support an argument that the term should be limited to a mechanical or tactile detection system, as opposed to a purely optical one. The complaint supports its infringement allegation with a figure from KeyMe's patent showing an "Milling Imaging Device" used to view the key's cross-section (Compl. ¶58).
VI. Other Allegations
- Indirect Infringement: The complaint includes counts for induced and contributory infringement of the ’179 patent but does not plead specific facts to support the requisite knowledge and intent beyond those alleged for direct infringement (Compl. ¶¶ 129-130).
- Willful Infringement:
- ’446 Patent: The complaint alleges willfulness based on pre-suit knowledge, asserting that Defendant was served with a complaint alleging infringement of the ’446 patent in a prior lawsuit on March 30, 2015 (Compl. ¶122).
- ’179 Patent: Willfulness is alleged based on Defendant’s actual knowledge of the patent "on or about" its issue date of March 13, 2018 (Compl. ¶132). The complaint further supports this by noting that Defendant cited the parent application of the ’179 patent in an Information Disclosure Statement filed with the PTO in a separate matter (Compl. ¶131).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary sufficiency: Can Plaintiff substantiate its "information and belief" allegations, particularly for the ’179 patent, where the infringement theory for the "blade cross-section detector" is built largely upon technical descriptions found in Defendant's own patent literature rather than direct observation of the accused product's internal operations? The case may depend on what is revealed in discovery about the kiosks' actual functionality.
- A key legal question will be the impact of prior proceedings: How will the history of the IPR, which invalidated a majority of the ’446 patent's original claims, influence the court's construction of the surviving asserted claim? Similarly, what weight will be given to the prior Minnesota litigation in establishing pre-suit knowledge for the purpose of willfulness?
- A central technical question will be one of functional and structural correspondence: Does the accused kiosk's imaging system, described as using "computer vision and neural networks," perform the specific functions of the "key analysis system" of the ’446 patent and the "blade cross-section detector" of the ’179 patent? Further, do the physical features of the kiosk's front panel meet the definition of a "guard" as claimed in the ’446 patent?