DCT

2:21-cv-00190

PerdiemCo LLC v. Mix Telematics North America

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:21-cv-00190, E.D. Tex., 05/29/2021
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant MiX Telematics North America, Inc. is incorporated in Texas and both defendants maintain a regular and established place of business in the district and have committed acts of infringement there.
  • Core Dispute: Plaintiff alleges that Defendant’s fleet telematics products and services, which include Electronic Logging Devices (ELDs) and geofencing capabilities, infringe ten U.S. patents related to location tracking, event logging, and systems for managing access to tracking data.
  • Technical Context: The technology at issue falls within the vehicle telematics and fleet management sector, a market where location tracking and event logging are critical for regulatory compliance, operational efficiency, and driver monitoring.
  • Key Procedural History: The patents-in-suit belong to a larger family that has been the subject of extensive prior litigation in the Eastern District of Texas. The complaint notes that claims from this family have been previously construed by the court and found patent-eligible. It also alleges that the asserted patents issued after the USPTO considered prior art cited during the prior litigations and related Inter Partes Review (IPR) proceedings.

Case Timeline

Date Event
2005-12-23 Earliest Priority Date for all patents-in-suit
2017-06-13 U.S. Patent No. 9,680,941 issues
2018-01-16 U.S. Patent No. 9,871,874 issues
2018-07-10 U.S. Patent No. 10,021,198 issues
2019-01-01 U.S. Patent No. 10,171,950 issues
2019-04-30 U.S. Patent No. 10,277,689 issues
2019-05-07 U.S. Patent No. 10,284,662 issues
2019-08-13 U.S. Patent No. 10,382,966 issues
2019-08-27 U.S. Patent No. 10,397,789 issues
2020-03-24 U.S. Patent No. 10,602,364 issues
2020-10-27 U.S. Patent No. 10,819,809 issues
2021-05-29 Complaint Filed

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

U.S. Patent No. 10,382,966 - “Computing Device Carried by A Vehicle for Tracking Driving Events in a Zone Using Location and Event Log Files” (Issued Aug. 13, 2019)

The Invention Explained

  • Problem Addressed: The patent’s background section identifies a need for systems that do more than simply report an object's location; it describes the need to correlate specific events with object locations and convey information about those events to interested parties (e.g., ’966 Patent, col. 1:53-59).
  • The Patented Solution: The invention is a computing device within a vehicle that tracks and logs driving events. The system becomes active when the vehicle is powered on and uses a location tracking application (LTA) to record movement and non-movement events into log files (e.g., ’966 Patent, Abstract; col. 23:1-12). The device provides interfaces for a driver to log in, edit or enter information into the log files, and transmit the event information to recipients authorized by a driver administrator (’966 Patent, col. 23:20-49).
  • Technical Importance: This technology provides a framework for automated, in-vehicle event logging based on location and vehicle status, which is a foundational concept for modern Electronic Logging Devices (ELDs) used in commercial trucking for regulatory compliance and fleet management (Compl. ¶28).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 3, 8, 13, and 18 (Compl. ¶88).
  • Independent Claim 1 is a system claim directed to a computing device with essential elements including:
    • A sensor interface to receive sensor information, including when the vehicle is powered on.
    • A GPS receiver to provide location information.
    • A storage device for storing information, including event log files.
    • A processor executing a location tracking application (LTA) to record movement and non-movement driving events in the event log files after a specified event condition is met.
    • A log-in user interface for a driver to log into the LTA.
    • A first user interface to enable the driver to edit the event log file.
    • A second user interface to enable the driver to turn off a tracking mode.
    • A wireless email interface to transmit information from the event log file.
    • A Bluetooth interface to transmit information from the event log file.
    • A display device to display the information from the event log file.

U.S. Patent No. 10,021,198 - “Software-based Mobile Tracking Service with Video Streaming When Events Occur” (Issued Jul. 10, 2018)

The Invention Explained

  • Problem Addressed: The patent addresses the need for a system that can correlate events with object locations and manage the conveyance of information about those events to specific computing devices associated with users (’198 Patent, col. 1:53-59).
  • The Patented Solution: The invention describes a method for a tracking service with a multi-level administrative structure. A "first administrator" maintains the overall service and defines "information sharing environments." A "second administrator" (a user/purchaser of the service) can then define groups, user-defined zones, and event conditions within their respective environment (’198 Patent, col. 2:6-14, 23:25-50). When an event condition is met (e.g., an object enters a zone), the system conveys an alert, which comprises a video, to authorized users defined in an access list (’198 Patent, Abstract; col. 24:12-14).
  • Technical Importance: This tiered administrative model provides a technical architecture for privacy and delegated control in a Software-as-a-Service (SaaS) context, allowing a central provider to offer a tracking platform while individual customers (e.g., fleet managers) maintain private control over their specific tracking rules, alerts, and recipients (Compl. ¶24-27).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶107).
  • Independent Claim 1 is a method claim with essential elements including:
    • Providing a computer server with a first database management system software.
    • Providing first administrative privileges to a first administrator to define a plurality of second information sharing environments.
    • Providing second administrative privileges to a plurality of second administrators to define groups within their respective environments.
    • Providing a plurality of second database management system software on user computing devices.
    • Enabling a first authorized user (e.g., a second administrator) to define an event condition and an event information access code (a first access list).
    • Monitoring object location information.
    • Determining an event condition has been met.
    • Conveying an alert, which comprises a video, to authorized users on the first access list.

U.S. Patent No. 9,871,874 - “Multi-Level Database Management System and Method for an Object Tracking Service That Protects User Privacy”

  • Patent Identification: U.S. Patent No. 9,871,874, “Multi-Level Database Management System and Method for an Object Tracking Service That Protects User Privacy,” issued January 16, 2018 (Compl. ¶10).
  • Technology Synopsis: The patent claims a method for an object tracking service that uses multiple levels of administrative privileges to protect user privacy. A first administrator controls information sharing environments, while a second administrator controls groups within an environment, including defining event conditions and access lists for alerts, thereby separating high-level service administration from user-specific privacy controls (Compl. ¶22-27).
  • Asserted Claims: Independent claim 11 (Compl. ¶117).
  • Accused Features: Defendant's geofencing products and services, which allegedly provide a tracking service that sends notifications or alerts based on group event conditions and locations of tracked objects (Compl. ¶22-23, 54, 117).

U.S. Patent No. 9,680,941 - “Location Tracking System Conveying Event Information Based on Administrator Authorizations”

  • Patent Identification: U.S. Patent No. 9,680,941, “Location Tracking System Conveying Event Information Based on Administrator Authorizations,” issued June 13, 2017 (Compl. ¶17).
  • Technology Synopsis: The patent is directed to a location tracking system where an administrator authorizes which users can receive event information. The system conveys event information, generated when an object's location satisfies a condition relative to a user-defined zone, to computing devices associated with authorized users (Compl. ¶22-24, 33-34).
  • Asserted Claims: Independent claims 1 and 12 (Compl. ¶77).
  • Accused Features: Defendant's geofencing products and services, which are alleged to be location tracking systems that convey event information based on administrator authorizations when tracked objects cross a geofence boundary (Compl. ¶23, 54, 77).

U.S. Patent No. 10,277,689 - “Method for controlling conveyance of events by driver administrator of vehicles equipped with ELDs”

  • Patent Identification: U.S. Patent No. 10,277,689, “Method for controlling conveyance of events by driver administrator of vehicles equipped with ELDs,” issued April 30, 2019 (Compl. ¶11).
  • Technology Synopsis: This patent describes a method for controlling event information conveyance in a tracking service for vehicles with ELDs. It involves a multi-tiered administrative structure where an ELD administrator provides access to a "Driver administrator," who in turn sets rules and authorizes recipients for receiving recorded driving event information from vehicles within their group (Compl. ¶28, 67).
  • Asserted Claims: Independent claims 1, 4, 5, 6, and 7 (Compl. ¶67).
  • Accused Features: Defendant's ELD products and services, which allegedly control the conveyance of driving event information via a tracking service managed by administrators (Compl. ¶28, 54, 67).

U.S. Patent No. 10,602,364 - “Method For Conveyance Of Event Information To Individuals Interested Devices Having Phone Numbers”

  • Patent Identification: U.S. Patent No. 10,602,364, “Method For Conveyance Of Event Information To Individuals Interested Devices Having Phone Numbers,” issued March 24, 2020 (Compl. ¶16).
  • Technology Synopsis: The patent covers a method for conveying event information to devices identified by phone numbers. The system tracks mobile objects and sends notifications when group event conditions, which are based on the locations of these objects relative to a geofence, are met (Compl. ¶22-23).
  • Asserted Claims: Independent claim 3 (Compl. ¶127).
  • Accused Features: Defendant's ELD and geofencing products, which allegedly send notifications to authorized recipients when grouped vehicles cross a boundary (Compl. ¶23, 28, 54, 127).

U.S. Patent No. 10,284,662 - “Electronic logging device (ELD) for tracking driver of a vehicle in different tracking modes”

  • Patent Identification: U.S. Patent No. 10,284,662, “Electronic logging device (ELD) for tracking driver of a vehicle in different tracking modes,” issued May 7, 2019 (Compl. ¶12).
  • Technology Synopsis: The patent describes an ELD computing device in a vehicle that records driving event information. The device features multiple user interfaces that allow a driver to log in, edit the recorded information, and turn off a tracking mode, with the recorded information being transmitted via wireless interfaces (Compl. ¶28-30).
  • Asserted Claims: Independent claims 1, 13, and 14 (Compl. ¶57).
  • Accused Features: Defendant's ELD products, which are computing devices carried in vehicles alleged to track and log driver events and allow drivers to interact with and transmit event log files (Compl. ¶28-30, 54, 57).

U.S. Patent No. 10,397,789 - “Method for Controlling Conveyance of Event Information About Carriers of Mobile Devices Based on Location Information Received from Location Information Sources Used by the Mobile Devices”

  • Patent Identification: U.S. Patent No. 10,397,789, “Method for Controlling Conveyance of Event Information About Carriers of Mobile Devices Based on Location Information Received from Location Information Sources Used by the Mobile Devices,” issued August 27, 2019 (Compl. ¶14).
  • Technology Synopsis: The technology involves a method for controlling event notifications for carriers of mobile devices. The system allows an administrator to define groups, sub-groups, and multiple levels of administrative privileges to control who receives notifications when location-based event conditions are met (Compl. ¶22-25).
  • Asserted Claims: Independent claims 1, 12, 14, 17, 18, and 19 (Compl. ¶97).
  • Accused Features: Defendant's geofencing products and services, which allegedly control conveyance of event information based on the location of mobile devices and use multiple levels of administrative privileges (Compl. ¶22-25, 54, 97).

U.S. Patent No. 10,819,809 - “Method for Controlling Conveyance of Event Notifications in Sub-Groups Defined Within Groups Based on Multiple Levels of Administrative Privileges”

  • Patent Identification: U.S. Patent No. 10,819,809, “Method for Controlling Conveyance of Event Notifications in Sub-Groups Defined Within Groups Based on Multiple Levels of Administrative Privileges,” issued October 27, 2020 (Compl. ¶18).
  • Technology Synopsis: The invention is a method for controlling event notifications within a hierarchical group structure (groups and sub-groups) using multiple levels of administrative privileges. This allows for granular control over which authorized users receive alerts based on location-triggered events (Compl. ¶22-25).
  • Asserted Claims: Independent claim 1 (Compl. ¶137).
  • Accused Features: Defendant's ELD and geofencing products, which allegedly use groups and multiple levels of administrative privileges to control event notifications (Compl. ¶22-25, 28, 54, 137).

U.S. Patent No. 10,171,950 - “Electronic Logging Device (ELD)”

  • Patent Identification: U.S. Patent No. 10,171,950, “Electronic Logging Device (ELD),” issued January 1, 2019 (Compl. ¶19).
  • Technology Synopsis: The patent describes an ELD computing device that records driving events after the vehicle is powered on. It includes a log-in interface for a driver, an interface for editing event log files, and wireless interfaces for transmitting the recorded event information to authorized recipients (Compl. ¶28-30).
  • Asserted Claims: Independent claim 1 (Compl. ¶147).
  • Accused Features: Defendant's ELD products, which are alleged to be computing devices in vehicles that record and transmit driving event information based on driver and administrator authorizations (Compl. ¶28-30, 54, 147).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Defendant’s ELD and geofencing products and services, marketed as MiX ELD's, MiX On-Board Computers (e.g., 3000 or 4000 Series products), “MiX Rovi II,” and “MiX Fleet Manager,” including associated Software as a Service (“SaaS”) offerings (Compl. ¶54).

Functionality and Market Context

The complaint alleges these products form a web-based fleet management system (Compl. ¶54). Their functionality is alleged to include tracking the locations of mobile objects (e.g., vehicles), creating multiple levels of administrative privileges, and applying access controls to send notifications or alerts only to authorized recipients when certain "group event conditions" are met, such as a vehicle crossing a geofence boundary (Compl. ¶22-24). The products are also described as improved mobile computing devices (ELDs) that execute location tracking applications to control the conveyance of driving event information (Compl. ¶28).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint incorporates by reference exemplary claim charts (Exhibits M-V) for each asserted patent but does not attach them to the pleading (Compl. ¶55, 57, 67, 77, 88, 97, 107, 117, 127, 137, 147). The infringement theory must therefore be summarized from the complaint’s narrative allegations.

’966 Patent Infringement Allegations

The complaint alleges that Defendant’s Accused Products directly infringe claims of the ’966 Patent (Compl. ¶87). The narrative theory suggests the Accused Products, such as the MiX On-Board Computers, are infringing "computing devices" as claimed. The complaint alleges these devices are carried in vehicles, track driving events using location and other data, store these events in log files, and provide interfaces for drivers to log in and manage the data, mirroring the elements of claim 1 (Compl. ¶28-30, 54). The allegations further state that the system sends notifications to authorized recipients, corresponding to the claim's requirements for wireless data transmission (Compl. ¶30).

’198 Patent Infringement Allegations

The complaint alleges that Defendant’s Accused Products and Services directly infringe claims of the ’198 Patent (Compl. ¶107). The infringement theory is based on a method for providing a tracking service. It alleges that Defendant, as the service provider, acts as the "first administrator" by managing the overall tracking service, while its customers (e.g., fleet managers) act as "second administrators" who can define their own private groups, event conditions (geofences), and access lists for notifications (Compl. ¶24-27). This alleged two-tiered administrative structure is central to the infringement read on claim 1. The complaint generally references video streaming in connection with the patents-in-suit, which maps to the "alert comprises a video" limitation (Compl. ¶15).

Identified Points of Contention

  • Scope Questions: A central question for patents like the ’198 Patent will be whether the commercial relationship between MiX and its customers legally and technically maps onto the claimed "first administrator" and "second administrator" structure. Specifically, discovery may focus on whether MiX retains any administrative powers that would violate the claim limitation that the first administrator "does not exercise the second level of administrative privilege" (Compl. ¶25). For system claims like in the ’966 Patent, a scope question may arise regarding limitations such as "wireless email interface," and whether a device that sends data to a server, which then generates an email, meets this limitation.
  • Technical Questions: A key technical and evidentiary question will be whether the Accused Products perform the specific functions recited. For the ’198 Patent, what evidence shows that the accused service automatically conveys an alert that "comprises a video" when a user-defined event occurs? For the ’966 Patent, what is the nature of the "event log files," and does the accused system's driver interface permit editing of those files in the manner required by the claim?

V. Key Claim Terms for Construction

The complaint alleges that it applies claim constructions adopted during prior EDTX litigation concerning the same patent family, but the referenced claim construction orders (Exhibits K and L) were not provided with the complaint (Compl. ¶49, 52). Therefore, detailed analysis of specific constructions is not possible. However, based on the infringement allegations, certain terms will likely be central to the dispute.

"first administrator" / "second administrator" (’198 Patent, claim 1)

  • Context and Importance: This two-tiered administrative structure is the core of the infringement theory for several asserted patents. Practitioners may focus on these terms because the entire case for these patents may depend on successfully mapping Defendant to the "first administrator" role and its customers to the "second administrator" role, including all functional requirements and limitations associated with each.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes these roles functionally, where the first administrator provides the overarching service environment and the second administrator manages groups, zones, and events within that environment, which may align with a typical SaaS provider-customer relationship (’198 Patent, col. 23:25-50).
    • Evidence for a Narrower Interpretation: The claim language states that the first administrator "does not exercise the second level of administrative privilege" (Compl. ¶25). This negative limitation could support a narrow construction where any ability of the service provider (the alleged "first administrator") to view, override, or control the customer's ("second administrator's") group settings would place it outside the claim scope.

"event log files" (’966 Patent, claim 1)

  • Context and Importance: The infringement reading requires that the accused in-vehicle devices record events into "event log files" and provide an interface for the driver to edit them. Practitioners may focus on this term to dispute whether the accused system, which may use a relational database or other modern data structure, employs a "file" in the manner contemplated by the patent.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent uses the term "log file" generally in the context of storing GPS and event information, which could be argued to cover any structured collection of data, including database entries (’966 Patent, col. 21:3-5).
    • Evidence for a Narrower Interpretation: The patent’s figures depict a "Log File Selection Screen" showing a user selecting specific "*.log" text files from a directory on a PDA-like device, which could support an argument that the term requires a discrete, self-contained file in a traditional file system, rather than an entry in a larger database (’966 Patent, FIG. 12b).

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement for all ten patents. Inducement is alleged based on Defendant knowingly selling the Accused Products with the intent that its customers will infringe, supported by instructions and documentation that guide users to perform the infringing acts (e.g., Compl. ¶60-61, 70-71).

Willful Infringement

Willfulness is alleged for all ten patents. The complaint bases this allegation on Defendant’s alleged knowledge of the patents through "pre-filing correspondence" and, at a minimum, knowledge from the filing of the lawsuit itself (e.g., Compl. ¶59, 63-64).

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

  • A core issue will be one of structural equivalence: Does the commercial relationship between MiX (as a SaaS provider) and its customers (as fleet managers) map directly onto the patents' specific, multi-level "administrator" hierarchy, particularly given the claim limitations on the powers each administrative level can exercise?
  • A second central issue will be the applicability of prior legal rulings: To what extent will the claim constructions established during prior litigation involving this patent family be adopted in this case, and how will the patents' prosecution history, which allegedly includes consideration of prior art from those same litigations and related IPRs, impact arguments on validity?
  • A key evidentiary question will be one of functional operation: What technical evidence will support the allegations that the accused products perform the specific functions recited in the claims—such as a driver editing a local "event log file" or a service automatically conveying "a video" as part of a location-based alert—as opposed to functionally similar but technically distinct operations?