DCT
2:20-cv-00070
Hillman Group Inc v. KeyMe LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: The Hillman Group, Inc. (Delaware)
- Defendant: KeyMe, LLC (Delaware)
- Plaintiff’s Counsel: Findlay Craft, P.C. (with Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. of counsel)
- Case Identification: 2:20-cv-00070, E.D. Tex., 03/02/2020
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant has committed acts of patent infringement in the district and maintains "regular and established places of business" in the form of approximately thirty key duplication kiosks.
- Core Dispute: Plaintiff alleges that Defendant’s self-service key duplication kiosks infringe a patent related to automated key identification and fabrication technology.
- Technical Context: The lawsuit concerns automated key duplication kiosks, a technology that enables consumers to copy mechanical and electronic (transponder) keys in a retail setting without a traditional locksmith.
- Key Procedural History: The complaint was filed on March 2, 2020, one day prior to the asserted patent’s issue date of March 3, 2020. This timing precludes any allegation of pre-suit infringement or pre-suit knowledge for the purpose of establishing willfulness. The complaint heavily relies on Defendant KeyMe’s own U.S. patents as evidence for the functionality of the accused products.
Case Timeline
| Date | Event |
|---|---|
| 2013-01-04 | KeyMe '468 patent application filed |
| 2013-08-16 | '830 Patent earliest priority date |
| 2015-07-06 | KeyMe '885 patent application filed |
| 2020-03-02 | Complaint filed |
| 2020-03-03 | U.S. Patent No. 10,577,830 issued |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,577,830 - Identification Module for Key Making Machine
- Issued: March 3, 2020
The Invention Explained
- Problem Addressed: The patent describes prior art automated key duplicators as potentially suboptimal due to processes that require numerous images, complex clamping mechanisms that must accommodate the entire key including the head, and independent cutting wheels, all of which can increase processing time, cost, and the likelihood of errors ('830 Patent, col. 2:9-28).
- The Patented Solution: The invention discloses a "key making machine" with a modular design. A core component is an identification module featuring a key receiving assembly configured to accept "only a shank of an existing key" ('830 Patent, col. 2:36-38, Abstract). This design simplifies the process by using an imaging system to capture the key's characteristics, such as its tip and channel profile, through a slot, potentially avoiding the need to clamp the often irregularly shaped key head ('830 Patent, col. 2:38-43).
- Technical Importance: This approach aims to improve the speed, accuracy, and versatility of automated key duplication by simplifying the physical handling and optical analysis of various key types.
Key Claims at a Glance
- The complaint asserts infringement of "multiple claims... including at least claim 1" (Compl. ¶22). Independent claim 1 is detailed.
- Essential Elements of Independent Claim 1:
- A key making machine comprising a housing.
- An identification system that includes: (1) a slot opening to receive a key shank; (2) a transponder sensor to detect and read a transponder in a second key; and (3) an imaging system with a single camera to determine the channel profile of each side of the shank of a first key without withdrawing and reintroducing it.
- A fabrication system configured to receive a matching key blank and cut a bitting pattern into it.
- A user interface with a touch screen that provides status information.
- A credit card reader.
III. The Accused Instrumentality
Product Identification
Defendant's self-service key duplicating kiosks, marketed under trade names including "KeyMe" and "Locksmith in a Box" (the "Infringing Products") (Compl. ¶19).
Functionality and Market Context
The accused products are self-service kiosks located in retail stores that allow consumers to duplicate keys (Compl. ¶¶4, 25). The kiosks are alleged to use "3D imaging and predictive algorithms" to scan an inserted key and can copy both standard mechanical keys and "more advanced keyless 'fob' keys" containing transponders (Compl. ¶¶27, 29). The system is alleged to autonomously select an appropriate key blank from an internal magazine and cut it to match the original (Compl. ¶33). The kiosks are equipped with a touchscreen user interface and accept payment via a credit card reader (Compl. ¶¶36, 38). An image from KeyMe's website shows the kiosk with a slot for key insertion labeled "INSERT KEY" (Compl. ¶26; Ex. F).
IV. Analysis of Infringement Allegations
U.S. Patent No. 10,577,830 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a slot opening in the housing configured to receive the shank of an existing first key | The kiosks include a "key-receiving entry" or slot for a user to insert a key. An image provided shows a KeyMe kiosk with a slot labeled "INSERT KEY". | ¶26 | col. 21:30-34 |
| a transponder sensor configured to detect the presence of a transponder within an existing second key and to read a transponder code associated with the detected transponder | The kiosks can copy "Fob keys" and car keys "with transponder chips." The complaint cites a KeyMe patent application figure depicting a kiosk with a "transponder antenna" to support this allegation. A diagram from Defendant's '885 patent shows a "transponder antenna" as part of the kiosk system (Compl. ¶28; Ex. M). | ¶27 | col. 9:36-44 |
| an imaging system... configured to use a single camera to determine at least a channel profile of each side of the shank of the existing first key without withdrawing and reintroducing the existing first key in the slot | The kiosks allegedly use "3D imaging" and "multiple cameras." The complaint cites figures from KeyMe's own '468 patent to allege the system can determine a key's cross-sectional "channel profile" in a single insertion. | ¶¶29, 31, 32 | col. 10:48-55 |
| a fabrication system... configured to: receive a key blank that the identification system has determined to be associated with the existing first key based at least in part on the determined channel profile... | The kiosks contain a storage magazine of key blanks and are described as autonomously selecting and cutting keys based on the scan. The complaint cites a KeyMe patent showing a magazine of key types selected based on an imaged profile. | ¶33 | col. 15:53-61 |
| ...cut a bitting pattern into the received key blank that matches the bitting pattern of the existing first key | The kiosks are described as being "equipped to print most common key types in just a few seconds" and "autonomously set itself up and start cutting keys." | ¶35 | col. 17:45-51 |
| a user interface associated with the housing, wherein the user interface includes a touch screen, and wherein the user interface is configured to provide status information... | The kiosks have a touchscreen, and a provided photograph shows the screen displaying a status message: "analyzing + examing [sic] all details." (Compl. ¶37; Ex. T). | ¶¶36, 37 | col. 7:56-col. 8:5 |
| a credit card reader | The kiosks feature a credit card reader for transactions, as shown in marketing materials. | ¶38 | col. 8:19-24 |
Identified Points of Contention
- Scope Questions: Claim 1 recites both "an existing first key" (for physical scanning) and "an existing second key" (for transponder scanning). This language raises the question of whether the claim requires two separate physical keys to be inserted to practice the invention, or if a single key possessing both physical and electronic features can serve as both the "first" and "second" key.
- Technical Questions: The claim requires the imaging system to "determine at least a channel profile of each side of the shank... without withdrawing and reintroducing the existing first key." A key technical question is whether the accused kiosks actually perform this specific single-insertion, dual-sided analysis. The complaint relies on KeyMe's own patents to support this functionality (Compl. ¶¶31-32), but the actual operation of the products in the field will be the subject of discovery.
V. Key Claim Terms for Construction
The Term: "channel profile"
- Context and Importance: This term is central to the claimed imaging and identification process. Its definition will determine what type of optical data the accused system must generate to infringe. Practitioners may focus on this term because infringement depends on whether KeyMe's "3D imaging" produces the specific "channel profile" contemplated by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification suggests this can be part of a broader "side-mill pattern" or general "geometry" that differentiates key blanks ('830 Patent, col. 10:50-52). This could support a construction covering any measurement of the key's cross-sectional shape.
- Evidence for a Narrower Interpretation: The claim requires determining the profile of each side of the shank ('830 Patent, col. 23:1-3). A defendant could argue this implies a specific type of dual-sided measurement process, rather than a generic 3D model, and may point to embodiments showing specific imaging of different key features to argue for a more limited scope ('830 Patent, col. 10:1-12).
The Term: "without withdrawing and reintroducing the existing first key in the slot"
- Context and Importance: This negative limitation defines the efficiency of the claimed imaging process. Infringement hinges on whether the accused kiosk's scanning method meets this "single-shot" requirement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: This language could be interpreted to mean that as long as the user does not have to physically pull the key out and put it back in, the limitation is met, even if the key is moved or rotated internally by the machine.
- Evidence for a Narrower Interpretation: The specification discusses capturing images from different sides using different light sources or mirrors, which may suggest a process where the key itself remains largely stationary relative to the slot ('830 Patent, col. 10:59-65). This could support an argument that significant internal repositioning of the key for a second scan is equivalent to "reintroducing" it to the imaging system.
VI. Other Allegations
- Indirect Infringement: The complaint focuses on direct infringement under 35 U.S.C. § 271(a) and does not plead specific facts to support claims of induced or contributory infringement (Compl. ¶41).
- Willful Infringement: The prayer for relief seeks enhanced damages for willful infringement (Compl. p. 15, ¶D). The complaint was filed on March 2, 2020, while the patent-in-suit did not issue until March 3, 2020 (Compl. ¶16). This timing makes any allegation of pre-suit willfulness untenable, as the asserted patent rights did not exist prior to filing. Any potential willfulness claim would be limited to conduct occurring after Defendant received notice of the issued patent via this lawsuit.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the terms "an existing first key" and "an existing second key" in Claim 1 be read to cover a single, combination key containing both a physical bitting pattern and an electronic transponder, or does the claim unambiguously require two separate physical keys?
- A key evidentiary question will be one of technical proof: does the accused KeyMe kiosk's imaging system actually operate as claimed, specifically by determining the "channel profile of each side of the shank" in a single insertion? The case may turn on whether Plaintiff can prove the products in the field function as described in Defendant's own patent documents cited in the complaint.
- A final question will concern willfulness: given that the complaint was filed before the patent issued, the basis for willfulness is limited to post-filing conduct. The court will have to decide if Defendant's continued operation after being served with the complaint and a now-issued patent rises to the level of egregious conduct required for enhanced damages.