DCT
2:22-cv-00110
Transcend Shipping Systems LLC v. FedEx Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Transcend Shipping Systems LLC (Florida)
- Defendant: Federal Express Corporation d/b/a FedEx Express, and FedEx Freight Corporation (Delaware)
- Plaintiff’s Counsel: Garteiser Honea PLLC
- Case Identification: 2:22-cv-00110, E.D. Tex., 07/20/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendants regularly conduct business in the district and maintain physical offices in locations including Plano and Tyler, Texas.
- Core Dispute: Plaintiff alleges that Defendant’s SenseAware shipment monitoring devices and associated services infringe five U.S. patents related to apparatuses for providing real-time shipment information.
- Technical Context: The technology concerns systems embedded in shipping containers, pallets, or luggage that use GPS, environmental sensors, and wireless communication to monitor and report the location and condition of goods in transit.
- Key Procedural History: This filing is a Second Amended Complaint. The complaint asserts that all five patents-in-suit descend from a common priority application and alleges they are "pioneering" patents that were allowed after extensive examination of prior art by the U.S. Patent and Trademark Office. Plaintiff alleges Defendant was on actual notice of the patents as of April 12, 2022, the service date of the original complaint. The complaint also notes that all asserted patents have expired, some due to nonpayment of maintenance fees, and seeks damages for past infringement.
Case Timeline
| Date | Event |
|---|---|
| 2001-01-23 | Earliest Priority Date for all Patents-in-Suit |
| 2007-08-07 | U.S. Patent No. 7,253,731 Issues |
| 2009-01-27 | U.S. Patent No. 7,482,920 Issues |
| 2017-12-19 | U.S. Patent No. 9,847,029 Issues |
| 2019-01-15 | U.S. Patent No. 10,181,109 Issues |
| 2019-08-07 | ’731 Patent Expires |
| 2020-10-06 | U.S. Patent No. 10,796,268 Issues |
| 2021-01-27 | ’920 Patent Expires |
| 2021-12-19 | ’029 Patent Expires |
| 2022-01-22 | ’109 and ’268 Patents Expire |
| 2022-04-12 | Date of Alleged Actual Notice to Defendant |
| 2022-07-20 | Second Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
This report provides a full analysis for the first two patents listed in the complaint’s infringement counts, U.S. Patent Nos. 10,181,109 and 9,847,029, and provides capsule summaries for the remaining three patents.
U.S. Patent No. 10,181,109 - "Apparatus and Method for Providing Shipment Information," Issued Jan. 15, 2019
The Invention Explained
- Problem Addressed: The patent family’s background describes a market deficiency where senders and receivers of shipped goods possess "only very limited means available to them for obtaining shipment information regarding shipments in transit" (’268 Patent, col. 1:47-51).
- The Patented Solution: The invention is an apparatus integrated with a shipping container, pallet, or piece of luggage that provides real-time shipment information (’109 Patent, Abstract). The apparatus includes a global positioning device to determine its location, a processor to generate a message, and a transmitter to send it. A key aspect is the inclusion of a "receiver" that "automatically" receives a "request for information," which in turn triggers the processor to generate and send a message containing the shipment's location (’109 Patent, Abstract). The system architecture envisions communication between the shipment device and computers associated with the sender, carrier, and receiver (’268 Patent, FIG. 1).
- Technical Importance: This approach claims to provide an automated, on-demand information system for tracking assets, moving beyond passive data logging to a more interactive monitoring capability (Compl. ¶37).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 8, 10, and 14 (Compl. ¶48).
- Independent Claim 1 of the ’109 Patent includes these essential elements:
- An apparatus comprising a shipment conveyance device (e.g., container, pallet, luggage).
- A receiver.
- A global positioning device located on the conveyance device to determine its position.
- A processor that generates a message in response to an event or a request for information.
- The request for information is automatically received by the receiver.
- The message contains information regarding the position or location of the conveyance device.
- A transmitter located on the conveyance device that transmits the message to a communication device associated with an owner or authorized individual.
U.S. Patent No. 9,847,029 - "Apparatus and Method for Providing Shipment Information," Issued Dec. 19, 2017
The Invention Explained
- Problem Addressed: The patent addresses the lack of real-time, detailed information available to parties involved in a shipment, noting that senders and receivers have "only very limited means" for tracking goods while in a carrier's possession (’029 Patent, col. 1:49-53).
- The Patented Solution: The patent describes an apparatus attached to a shipping container that includes a memory device, a GPS device, a processor, and a transmitter (’029 Patent, Abstract). The system is designed to respond to the "occurrence of an event" (such as a temperature change, impact, or deviation from route) or a request for information. In response, the processor generates and transmits a message containing not only the shipment's location but also data regarding the event itself, such as temperature, impact force, or transportation status (’029 Patent, Abstract; col. 2:18-28). The device's internal computer components are illustrated in a block diagram, showing a CPU connected to sensors, a GPS unit, and communication modules (’029 Patent, FIG. 2).
- Technical Importance: The invention claims to enable comprehensive, multi-sensor monitoring of a shipment's condition, providing visibility beyond mere location to include environmental and handling data critical for sensitive cargo (Compl. ¶33).
Key Claims at a Glance
- The complaint asserts independent claim 2 and dependent claims 12, 15, and 19 (Compl. ¶61).
- Independent Claim 2 of the ’029 Patent includes these essential elements:
- An apparatus comprising a shipment conveyance device (e.g., container, pallet, luggage).
- A global positioning device located on the conveyance device to determine its position.
- A processor that processes information and generates a message in response to an event or a request for information.
- A transmitter located on the conveyance device.
- The transmitter transmits the message to a communication device associated with an owner, receiver, or authorized individual.
- The complaint explicitly reserves the right to assert additional claims (Compl. ¶61).
Multi-Patent Capsule: U.S. Patent No. 7,482,920
- Patent Identification: U.S. Patent No. 7,482,920, "Apparatus and Method for Providing Shipment Information," Issued Jan. 27, 2009.
- Technology Synopsis: The patent describes a shipment tracking apparatus with a memory device to store shipment information, a GPS device for location, a processor to generate messages based on events (e.g., temperature, status, impact), and a transmitter to send those messages to an authorized party (Compl. ¶17).
- Asserted Claims: Independent claims 1, 5, 9, 11, and 16 are asserted (Compl. ¶74).
- Accused Features: The complaint alleges that FedEx Corp’s SenseAware monitoring systems, when incorporated into shipping packaging, constitute the claimed apparatus (Compl. ¶75).
Multi-Patent Capsule: U.S. Patent No. 10,796,268
- Patent Identification: U.S. Patent No. 10,796,268, "Apparatus and Method for Providing Shipment Information," Issued Oct. 6, 2020.
- Technology Synopsis: This patent describes a tracking apparatus featuring a GPS device, a processor, a receiver, and a transmitter. The technology focuses on a processor that generates a message in response to an event or a "request for information" that is "automatically received by a receiver" (Compl. ¶20).
- Asserted Claims: Independent claims 1, 8, 10, and 12 are asserted (Compl. ¶89).
- Accused Features: The complaint identifies FedEx shipping containers incorporating SenseAware devices as the infringing instrumentalities (Compl. ¶90).
Multi-Patent Capsule: U.S. Patent No. 7,253,731
- Patent Identification: U.S. Patent No. 7,253,731, "Apparatus and Method for Providing Shipment Information," Issued Aug. 7, 2007.
- Technology Synopsis: The patent describes an apparatus associated with a shipment that includes a memory device, a GPS device, a processor, and a transmitter. The processor generates messages containing location and event information (e.g., status, temperature, impact) for transmission to a communication device (Compl. ¶16).
- Asserted Claims: Independent claims 1, 5, 9, 11, and 16 are asserted (Compl. ¶102).
- Accused Features: The complaint alleges infringement by FedEx packaging that incorporates SenseAware devices (Compl. ¶103).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are shipment conveyance devices, such as temperature-controlled packaging, that incorporate FedEx’s “SenseAware” monitoring devices (Compl. ¶¶44, 49).
Functionality and Market Context
- The SenseAware system is described as a multi-sensor device placed inside packages or pallets to monitor critical shipments (Compl. ¶50, p. 17, Fig. 6). The complaint alleges these devices use a "global positioning system (GPS)" for location tracking and an "integrated cellphone" to transmit data to an online application for analysis (Compl. ¶50, p. 17, Fig. 6). Figure 6 from the complaint is a screenshot from a SenseAware webpage explicitly stating the use of GPS and a cellphone to communicate data (Compl. p. 17, Fig. 6). The devices are alleged to measure temperature, humidity, pressure, shock, and light exposure (Compl. ¶51). A device specification sheet included in the complaint shows the SenseAware 3000 model is equipped with these sensors as well as cellular and GPS radios (Compl. p. 18, Fig. 7). The system is also alleged to provide alerts based on deviation from a pre-determined route, a feature referred to as "geofencing" (Compl. ¶55). The complaint positions the SenseAware products as being marketed for high-value shipments in industries such as healthcare and food, where maintaining and validating environmental conditions during transit is critical (Compl. ¶49).
IV. Analysis of Infringement Allegations
10,181,109 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an apparatus, comprising: a shipment conveyance device, wherein the shipment conveyance device is a shipping container, a pallet, or a piece of luggage | FedEx packaging and containers that incorporate SenseAware monitoring devices. | ¶49 | col. 24:1-3 |
| a receiver | The Accused Instrumentalities are alleged to comprise a receiver that automatically receives requests for information. | ¶51 | col. 10:5-12 |
| a global positioning device...which determines a position or location of the shipment conveyance device | The SenseAware system uses a global positioning system (GPS) to collect its location data. | ¶50 | col. 18:55-59 |
| a processor which generates a message in response to an occurrence of an event or in response to a request for information...wherein the request for information is automatically received by the receiver | The SenseAware system detects events such as temperature or route deviations and, in response, sends alerts ("message") to customers. | ¶51 | col. 20:9-15 |
| a transmitter...which transmits the message to a communication device associated with an owner of the shipment conveyance device or an individual authorized to receive the message | The SenseAware device transmits data via wireless communication (e.g., cellular) to an online application that can be viewed on a customer's computer or mobile device. | ¶52 | col. 11:42-51 |
9,847,029 Infringement Allegations
| Claim Element (from Independent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An apparatus, comprising: a shipment conveyance device, wherein the shipment conveyance device is a shipping container, a pallet, or a piece of luggage | FedEx packaging and containers that incorporate SenseAware monitoring devices. | ¶62 | col. 24:18-21 |
| a global positioning device...which determines a position or location of the shipment conveyance device | The SenseAware monitoring system includes a GPS device to determine the location of the shipping container. | ¶63 | col. 11:32-34 |
| a processor, wherein the processor processes information regarding the shipment conveyance device in response to an occurrence of an event or in response to a request for information...and further wherein the processor generates a message... | The SenseAware system includes processing devices that measure location, temperature, shock, etc., and send alerts ("message") in response to events like deviation in temperature or planned route. | ¶64 | col. 11:10-14 |
| a transmitter...which transmits the message to a communication device associated with an owner of the shipment conveyance device, a receiver of the shipment conveyance device, or an individual authorized to receive the message | The SenseAware device transmits information via cellular radio to customers, who can monitor shipments on a computer or mobile device. | ¶65 | col. 11:42-51 |
Identified Points of Contention
- Scope Questions: A central question for the ’109 and ’268 Patents may be the interpretation of a "receiver" that "automatically receives a request for information." The dispute may focus on whether the SenseAware system's standard operation involves such a "pull" mechanism from an external source, or if it operates primarily on a "push" basis where the device autonomously reports data upon detecting a predefined event.
- Technical Questions: The infringement theory is based on an "apparatus" that comprises the various claimed elements. A potential point of contention is whether the self-contained SenseAware device meets all claim limitations, or if the Plaintiff’s theory requires combining the device with FedEx’s broader network infrastructure (e.g., backend servers) to satisfy elements such as the "processor" or "receiver." The degree to which the claimed "apparatus" must be a single, integrated unit versus a distributed system will be a key issue.
V. Key Claim Terms for Construction
The Term: "receiver" (as in "a receiver...wherein the request for information is automatically received by the receiver") (’109 Patent, Claim 1)
Context and Importance: This term is critical for the ’109 and ’268 Patents. The infringement theory depends on establishing that the accused SenseAware system contains a "receiver" that functions in the specific manner claimed—automatically receiving an external request that triggers a message. Practitioners may focus on whether this requires an active "pull" mechanism initiated by a user or external system, or if it can be read to cover internal, pre-programmed polling cycles.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes a system of interconnected computers, including a "receiver computer" (50) and a "central processing computer" (60), that communicate with the shipment device (’029 Patent, FIG. 1). A party might argue that the "receiver" on the device is simply the component (e.g., a cellular modem) that receives any form of wireless communication from this network.
- Evidence for a Narrower Interpretation: The claim language links the "receiver" directly to the "apparatus" located on the conveyance device. The patent's block diagram for the device computer shows a distinct "Receiver" module (20G) as part of the device itself (’029 Patent, FIG. 2). A party may argue this structure, combined with the "automatically received" language, implies a specific component designed to process incoming external queries for information, distinct from merely receiving network signals.
The Term: "occurrence of an event" (’029 Patent, Claim 2)
Context and Importance: This term defines the trigger for the claimed message generation. Its construction will determine whether routine, scheduled data transmissions fall within the claim scope, or if the claim is limited to unscheduled, anomalous occurrences.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that any condition that causes the processor to generate a message is an "event," including the passing of a pre-set time interval for a status update.
- Evidence for a Narrower Interpretation: The specification provides specific examples of processing events, such as "a lost shipment, an off-track shipment, a delayed shipment, a damaged shipment, and/or a mis-delivered shipment" (’029 Patent, col. 4:20-22). The patent also describes detecting a temperature deviation or an impact from a mishandling or accident (’029 Patent, col. 20:3-8). These examples suggest the term is directed at deviations from a planned or normal state, which aligns with the complaint’s allegations regarding geofencing and temperature alerts (Compl. ¶¶55, 81-83).
VI. Other Allegations
- Indirect Infringement: The complaint does not plead separate counts for indirect or induced infringement.
- Willful Infringement: The complaint does not contain an explicit allegation of willful infringement. However, it repeatedly alleges that FedEx has been on "actual notice" of each of the patents-in-suit since at least April 12, 2022, the date it allegedly received service of the original complaint (Compl. ¶¶46, 59, 72, 87, 100). This allegation may form the basis for a later claim for enhanced damages for any post-notice infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of system architecture: does the claimed "apparatus" require all elements to reside in a single, integrated device on the shipping container, or can the claim be read to cover a distributed system where functionalities of the "processor" or "receiver" are performed by FedEx's backend network servers in communication with the SenseAware device?
- A key question of technical operation will be whether the accused SenseAware system functions on a "pull" basis, as suggested by the "request for information" language in the ’109 and ’268 patents, or on a "push" basis, where the device autonomously reports data upon the "occurrence of an event." Evidence on how the system is commanded and how it reports data will be central to this dispute.
- A final issue will be one of definitional scope: can the term "occurrence of an event" be construed to cover routine, time-based reporting, or is it limited to substantive deviations from a pre-determined plan, such as a temperature excursion, impact, or route deviation?