DCT
2:22-cv-00507
Liberty Access Tech Licensing LLC v. ASSA ABLOY Ab
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Liberty Access Technologies Licensing LLC (Texas)
- Defendant: ASSA ABLOY Ab, ASSA ABLOY Mobile Services AB, and ASSA ABLOY Global Solutions AB (Sweden)
- Plaintiff’s Counsel: Rozier Hardt McDonough PLLC
- Case Identification: 2:22-cv-00507, E.D. Tex., 04/28/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendants are non-U.S. residents and may be sued in any judicial district, and further alleges that Defendants conduct substantial business and have committed acts of infringement within the Eastern District of Texas.
- Core Dispute: Plaintiff alleges that Defendants’ mobile access systems and electronic locks, used primarily in the hospitality industry, infringe three patents related to using a portable electronic device to gain access to a locked resource based on a remotely-created digital reservation certificate.
- Technical Context: The technology involves mobile credentialing systems that allow users, such as hotel guests, to use smartphones as secure digital keys, a feature that has become a significant competitive differentiator in the hospitality market.
- Key Procedural History: U.S. Patent No. 9,373,205, one of the asserted patents, underwent ex parte reexamination, with a Reexamination Certificate issuing on February 25, 2022, which may affect the interpretation and strength of its claims. The complaint also alleges Defendants had knowledge of the patents-in-suit at least as of December 1, 2022, through a letter from Defendants' counsel seeking a license, forming a basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2010-03-02 | Earliest Priority Date for ’205, ’747, and ’474 Patents |
| 2016-06-21 | U.S. Patent No. 9,373,205 Issues |
| 2020-05-19 | U.S. Patent No. 10,657,747 Issues |
| 2022-02-25 | Reexamination Certificate for U.S. Patent No. 9,373,205 Issues |
| 2022-06-28 | U.S. Patent No. 11,373,474 Issues |
| 2022-08-01 | Alleged Knowledge Date (via accused customer) |
| 2022-12-01 | Alleged Knowledge Date (via license demand letter) |
| 2023-04-28 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,373,205 - Access Control System And Method For Use By An Access Device
Issued June 21, 2016
The Invention Explained
- Problem Addressed: The patent describes the challenge of conveniently managing access to resources like electric vehicle chargers or hotel room locks, where a user needs to find, reserve, and activate the resource without a complex on-site process (Compl. ¶55; ’205 Patent, col. 1:36-44).
- The Patented Solution: The invention provides an access device (e.g., a door lock) with a processor and a communication module. A user remotely makes a reservation, and a "reservation certificate" is sent to their portable device (e.g., a smartphone). The user's device then presents this certificate via short-range wireless communication to the access device. The access device’s processor independently verifies the certificate—for instance, by confirming the current time falls within the reservation interval specified in the certificate—and activates the door lock (’205 Patent, Abstract; col. 2:47-67; Fig. 4).
- Technical Importance: This system architecture allows the access device to function reliably without a persistent internet connection at the moment of use, as the authorization logic is based on a pre-validated digital credential stored on the user's portable device (’205 Patent, col. 2:54-62).
Key Claims at a Glance
- The complaint asserts infringement of at least claim 5 (Compl. ¶57). The infringement allegations in the complaint, however, appear to recite the elements of the independent claim from which claim 5 depends. Following reexamination, the asserted independent claim is reexamined claim 1.
- The essential elements of reexamined independent claim 1 are:
- An access device for use in an access control system, comprising a processor having control of a door lock and a communication module.
- The processor is configured to receive a reservation certificate presented by a portable terminal.
- When a current reservation certificate comprising an interval of a reservation is presented, the processor is configured to compare the reservation interval to a current time accessible to the processor.
- The processor determines if the current time is within the interval of the reservation.
- The processor activates the door lock to allow the portable terminal to unlock it during the interval of the reservation.
U.S. Patent No. 10,657,747 - Access Control System And Method For Use By An Access Device
Issued May 19, 2020
The Invention Explained
- Problem Addressed: The patent addresses the need for a complete, end-to-end system for managing reservations and access, encompassing not just the lock but also the user-facing reservation interface and the back-end server infrastructure (’747 Patent, col. 1:36-44).
- The Patented Solution: The patent claims a holistic access control system. This system includes a "secure reservation interface" (e.g., an app or website) for making a reservation, a "reservation server" that issues a certificate and a "communication setting," and an "application" on a user's device. The server transmits the certificate and the specific communication setting (e.g., a Bluetooth ID) to the user's application, which then uses that setting to establish a wireless link and present the certificate to the access device to activate the lock (’747 Patent, Abstract; col. 13:42-55; Fig. 7).
- Technical Importance: This invention claims the entire ecosystem, from the initial reservation request to the final activation, and crucially includes the step of the server providing the necessary network or wireless parameters to the user's device to facilitate the local connection to the lock (’747 Patent, col. 11:35-40, 61-68).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶81).
- The essential elements of independent claim 1 are:
- An access device with a processor-controlled door lock and communication module.
- A secure reservation interface (on a first device) for receiving reservation requests including a location and interval.
- A reservation server that receives the request, issues a reservation certificate, and transmits the certificate and a "communication setting" to a second device (e.g., a smartphone).
- An application on the second device that receives the certificate and setting, and upon command, wirelessly transmits the certificate to the access device using the provided setting.
- The access device receives the certificate and its processor activates the door lock.
U.S. Patent No. 11,373,474 - Access Control System And Method For Use By An Access Device
Issued June 28, 2022
Technology Synopsis
This patent claims an access control system where the server provides a reservation certificate and a communication setting to an application on a portable terminal. In this configuration, the application itself is responsible for comparing the reservation interval with the current time to determine if the certificate is valid, and then communicates with the access device to activate the lock if the certificate is current (’474 Patent, Abstract; col. 10:1-19).
Asserted Claims
Independent claim 1 (Compl. ¶103).
Accused Features
The complaint alleges that the full suite of ASSA ABLOY products, including the Mobile Access App and backend services, infringes by providing a system where the app on the portable terminal performs the time-based validation of the reservation certificate before activating the VingCard lock (Compl. ¶104).
III. The Accused Instrumentality
Product Identification
The accused products comprise a suite of hardware and software marketed as a mobile access solution for hospitality, including the ASSA ABLOY Mobile Access App, Mobile Access Services (which use Seos credential technology), a Software Development Kit (SDK) for third-party integration, the Visionline management system, and VingCard brand electronic locks (e.g., Signature RFID, Classic RFID) (Compl. ¶¶30-31).
Functionality and Market Context
The accused system enables hotel guests to use a smartphone application as a digital room key, facilitating a "contactless" experience by bypassing the front desk (Compl. ¶¶8, 38). The complaint includes a marketing diagram illustrating the workflow: a hotel's management system requests a key from the "Visionline" system, which generates a digital key and transfers it to the cloud-based "ASSA ABLOY Mobile Services," which in turn securely delivers the encrypted key to the guest's phone (Compl. ¶33, Fig. on p. 10). The complaint highlights the system's significant market adoption by referencing major hotel chains like Marriott, Hilton, and Radisson as customers (Compl. ¶25, Fig. on p. 6).
IV. Analysis of Infringement Allegations
’205 Patent Infringement Allegations
| Claim Element (from reexamined Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An access device... comprising a processor having control of a door lock; and a communication module connected to the processor... | The VingCard Electronic Locks are alleged to be the access device, containing a processor to control the lock and a communication module (e.g., a Bluetooth Low Energy board or ZigBee endnode) for wireless communication. A diagram from an FCC user manual shows a "ZigBee endnode" as part of the lock assembly (Compl. ¶18, Fig. on p. 18). | ¶¶41-42, 58 | col. 6:28-30 |
| ...the processor is configured to receive a reservation certificate presented by a portable terminal through the communication module; | The guest's smartphone (portable terminal) running the Mobile Access App transmits an encrypted digital key (reservation certificate) to the lock via a secure, short-range wireless channel like Bluetooth. | ¶¶33, 58 | col. 6:3-7 |
| ...when a current reservation certificate that comprises an interval of a reservation is presented..., the processor is configured to compare the interval of the reservation... to a current time accessible to the processor, [and] determine the current time is within the interval... | The complaint alleges that the processor is configured to perform this time-based validation. The digital key corresponds to a reservation with a specific interval (e.g., check-in/check-out dates). The complaint shows a reservation screen with these dates (Compl. ¶33, Fig. on p. 10). | ¶¶58-59 | col. 6:8-12 |
| ...and activate the door lock to allow the portable terminal to unlock the door lock during the interval of the reservation. | Upon successful validation, the lock's processor activates the mechanism, unlocking the door. A visual in the complaint depicts a guest opening the door with their mobile key after presenting it to the lock (Compl. ¶34, Fig. on p. 13). | ¶58 | col. 6:12-16 |
- Identified Points of Contention:
- Locus of Comparison: A primary technical question is where the comparison of the reservation interval to the current time occurs. Reexamined claim 1 of the ’205 patent requires the access device's processor to perform this step. The complaint's allegations are general on this point, and it is a question for the court whether the evidence will show this function is performed in the lock itself or, alternatively, in the smartphone application (which is a theory of infringement under the ’474 patent).
- Pleading Ambiguity: The complaint explicitly asserts "claim 5" but the corresponding narrative infringement allegations in paragraph 58 more closely track the elements of reexamined independent claim 1. This raises a question of which specific claim limitations Plaintiff intends to prove are infringed.
’747 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) an access device comprising a communication module connected to a processor having control of a door lock; | The VingCard Electronic Locks are alleged to be the access device, containing a processor and a Bluetooth or RFID/ZigBee communication module. | ¶¶41-42, 82 | col. 10:48-50 |
| b) a secure reservation interface... for receiving a selection of a location at the destination and an interval of the reservation; | The complaint provides a screenshot of a reservation screen where hotel staff can input guest details, a room number, and check-in/check-out dates, which is alleged to be the secure reservation interface (Compl. ¶33, Fig. on p. 10). | ¶¶32, 82 | col. 13:14-20 |
| c) a reservation server... to receive the... request; issue a reservation certificate...; and transmit, via the network... the reservation certificate and a communication setting... | The "cloud-based ASSA ABLOY Mobile services" and "Visionline" system are alleged to be the reservation server, which generates a digital key (certificate) and delivers it over the air to the guest's phone. | ¶¶33, 82 | col. 11:17-31 |
| d) an application installed on the second device... wherein the application wirelessly transmits the reservation certificate to the access device using the communication setting... | The ASSA ABLOY Mobile Access App, installed on a guest's smartphone, allegedly receives the key and uses a "secure communication channel" (e.g., Bluetooth) to transmit it to the lock. | ¶¶33, 82 | col. 12:21-30 |
| e) wherein the access device receives the reservation certificate... and the processor activates the door lock... | The lock allegedly receives the digital key from the app, decrypts it, and unlocks the door, as shown in the complaint's process flow diagrams. | ¶¶33-34, 82 | col. 12:31-36 |
- Identified Points of Contention:
- "Communication Setting": The claim requires the server to transmit a "communication setting" to the mobile app. The complaint alleges the system functions this way but does not provide specific evidence detailing what data constitutes this setting (e.g., a specific Bluetooth ID, network SSID) or how it is transmitted from the server as distinct from the reservation certificate itself.
- System Boundaries: The claim recites a multi-component system involving actions by a server, a user's device, and an access device. Infringement analysis will depend on whether the actions of Defendants, their customers (hotels), and end-users (guests) can be attributed to a single party or collectively meet the claim limitations under a theory of joint infringement.
V. Key Claim Terms for Construction
For the ’205 Patent
- The Term: "reservation certificate"
- Context and Importance: This term defines the digital credential at the heart of the invention. Its construction is critical to determining whether the "digital key" used in the accused system meets the claim requirements, specifically whether it must contain data corresponding to a reservation "interval."
- Intrinsic Evidence for a Broader Interpretation: The specification refers to the credential as a "digital token or certificate," which could support a construction that includes any form of digital authorization to unlock the device (’205 Patent, col. 2:18-19).
- Intrinsic Evidence for a Narrower Interpretation: Reexamined claim 1 explicitly requires the certificate to comprise an "interval of a reservation." Furthermore, the specification's embodiment in Figure 2 shows fields for "START TIME" and "SERVICE TYPE," suggesting the certificate is more than a simple key and must contain reservation-specific data (’205 Patent, Fig. 2; col. 6:21-25).
For the ’747 Patent
- The Term: "communication setting"
- Context and Importance: This term is a key limitation of the system claim, requiring the server to provide the mobile app with the information needed to establish the local wireless link to the lock. Proving infringement will require identifying what specific data in the accused system meets this definition.
- Intrinsic Evidence for a Broader Interpretation: The term is not narrowly defined, which could support an argument that any parameter that enables or configures the wireless communication link qualifies.
- Intrinsic Evidence for a Narrower Interpretation: The specification provides concrete examples of what this setting could be, including "network SSID, passcodes, IP addresses, Bluetooth ID, etc." (’747 Patent, col. 11:65-68). This language may support a narrower construction requiring the transmission of specific network or device identifiers.
VI. Other Allegations
Indirect Infringement
The complaint alleges inducement of infringement by Defendants providing customers (hotels) and end-users (guests) with products, an SDK, user manuals, marketing materials, and technical support that instruct and encourage use of the mobile access system in an infringing manner (Compl. ¶¶62, 84, 106). Contributory infringement is alleged on the basis that the mobile access features are specially designed for an infringing use and are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶¶64, 86, 108).
Willful Infringement
Willfulness is alleged based on Defendants' knowledge of the asserted patents since at least December 1, 2022, stemming from a letter sent by their counsel demanding a license. The complaint also alleges an earlier knowledge date of August 2022 and claims Defendants were willfully blind by maintaining a policy of not reviewing the patents of others (Compl. ¶¶68-71, 90-93, 112-115).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key technical question will be one of locus of function: Does the accused VingCard lock’s processor perform the time-based validation of the digital key as required by the ’205 patent, or is that logic executed on the guest’s smartphone app, as separately claimed in the ’474 patent? The evidence in the complaint does not dispositively show where this comparison occurs, making it a central point of discovery and contention.
- A core issue of claim construction will be the definitional scope of "communication setting" in the ’747 patent. The case may turn on whether this term is construed to require the server to transmit specific network identifiers (e.g., a Bluetooth ID) to the mobile app, and whether the plaintiff can produce evidence that the accused system operates in this manner.
- A foundational question will be one of infringement liability: Given that the claimed systems involve actions taken by multiple entities (the defendant's servers, the hotel's systems, and the guest's phone), the court will need to analyze whether the alleged acts constitute direct infringement by a single actor or if liability can be established under theories of divided or joint infringement.