DCT
2:24-cv-00269
Facet Technology Corp v. Here Global BV
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Facet Technology Corp. (Minnesota)
- Defendant: HERE Global B.V. (Netherlands)
- Plaintiff’s Counsel: Dickinson Wright PLLC
- Case Identification: 2:24-cv-00269, E.D. Tex., 04/22/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is a foreign entity not resident in the United States and because Defendant imports, sells, and offers to sell its products and services throughout the United States, including within the Eastern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s HD Mapping technologies infringe patents related to automated systems for assessing reflective objects, such as signs and markings, along a roadway.
- Technical Context: The technology involves automated, vehicle-mounted systems for capturing and analyzing data about roadway infrastructure, a key capability for developing the high-definition maps essential for modern navigation and autonomous driving systems.
- Key Procedural History: The complaint alleges a history between the parties dating back to 2006, when Plaintiff Facet and Defendant's predecessor, Navteq, engaged in licensing and business acquisition discussions. During these discussions, Facet allegedly provided Navteq with a list of its patents and pending applications from the family of the patents-in-suit. Following these discussions, Navteq filed its own patent application on similar technology in 2009. Plaintiff also alleges sending a notice of infringement letter to Defendant on January 4, 2017, to which Defendant did not respond.
Case Timeline
| Date | Event |
|---|---|
| 2001-08-10 | Earliest Priority Date for '255 and '328 Patents |
| 2006-11-01 | Facet allegedly provides patent list to HERE's predecessor, Navteq |
| 2009-02-20 | HERE's predecessor, Navteq, files its own patent application |
| 2016-05-10 | U.S. Patent No. 9,335,255 issues |
| 2017-01-04 | Facet sends infringement notice letter to HERE |
| 2017-06-06 | U.S. Patent No. 9,671,328 issues |
| 2024-04-22 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,335,255, "System and Assessment of Reflective Objects Along a Roadway," Issued May 10, 2016
The Invention Explained
- Problem Addressed: The patent describes prior art methods for assessing road signs as being manual, time-consuming, and inefficient for managing large inventories of roadway assets. Techniques such as using handheld retroreflectometers or vehicle systems that require an operator to manually target individual signs are noted as having significant drawbacks (Compl. ¶25; ’255 Patent, col. 2:1-24).
- The Patented Solution: The invention is an automated method where a vehicle-mounted system traverses a roadway and repeatedly illuminates a general area, capturing multiple light intensity measurements from that area without needing to target specific signs. A computer processing system then analyzes this series of measurements to identify reflective surfaces and assess their reflective characteristics, enabling high-throughput data collection in a single pass. (’255 Patent, Abstract; col. 4:45-58).
- Technical Importance: This automated approach was designed to provide a more accurate and efficient system for cataloguing the reflective properties of road signs and pavement markings over large areas (Compl. ¶25).
Key Claims at a Glance
- The complaint asserts independent claim 12 (Compl. ¶28, ¶73).
- The essential elements of method claim 12 are:
- Activating a light source while traversing a roadway to illuminate an area with a reflective road marker.
- Determining a plurality of light intensity values from a field of view that includes the illuminated area.
- Using a computer to identify a portion of the intensity values associated with the road marker's reflective surface.
- Using the computer to analyze that portion of intensity values to determine an assessment of the road marker's reflective characteristic.
- The prayer for relief seeks judgment on "one or more claims," suggesting the potential assertion of dependent claims (Compl. p. 19, ¶A).
U.S. Patent No. 9,671,328, "System and Assessment of Reflective Objects Along a Roadway," Issued June 6, 2017
The Invention Explained
- Problem Addressed: The patent identifies a critical problem in accurately and efficiently creating an inventory of road sign locations, noting that prior methods were not sufficiently automated or accurate (Compl. ¶41; ’328 Patent, col. 1:46-54).
- The Patented Solution: The invention is an automated system comprising an "active light sensor" (a light source and a sensor) that traverses a roadway. A computer processing system, operably connected to the sensor, is configured to detect objects, determine if they are reflective, and then analyze the measured light intensity to determine an "assessment of a discrete location of the road marker." (’328 Patent, Abstract; col. 8:9-24). The focus is on the integrated system and its ability to determine precise location.
- Technical Importance: The claimed system aims to provide a more efficient and accurate automated solution for locating roadway assets, a foundational task for creating and updating reliable, high-definition digital maps (Compl. ¶41).
Key Claims at a Glance
- The complaint asserts independent claim 9 (Compl. ¶44, ¶97).
- The essential elements of system claim 9 are:
- An automated system comprising an "active light sensor" (which includes a light source and a light sensor) that is traversed along a roadway.
- A computer processing system operably connected to the active light sensor.
- The computer is configured to detect objects of interest and, for each object, determine if it has a light intensity value associated with a reflective road marker.
- The computer is further configured to analyze the light intensity value to determine an "assessment of a discrete location" of the road marker.
- The prayer for relief seeks judgment on "one or more claims," suggesting the potential assertion of dependent claims (Compl. p. 19, ¶A).
III. The Accused Instrumentality
Product Identification
The complaint identifies the "Accused Products" as systems used to run HERE’s HD Maps, which "utilize travel path features determined from LiDAR cloud map technology" (Compl. ¶65).
Functionality and Market Context
- The Accused Products are described as automated systems that detect and process roadway information using advanced machine-learning algorithms to assess reflective surfaces like lane markings and road signs (Compl. ¶60). The complaint alleges these systems use LiDAR to illuminate the roadway and to function as the intensity sensor, with the resulting data being processed to determine travel path features (Compl. ¶¶75-77).
- Plaintiff alleges these technologies are essential for competitiveness in the modern vehicle market and have significantly contributed to Defendant's profitability and efficiency (Compl. ¶¶66-67).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
A significant post-filing event, evidenced by the provided patent documents, is a statutory disclaimer filed on December 9, 2024, for claims 12-14 and 17-23 of the ’255 Patent. This disclaimer of claim 12, the sole claim of the ’255 Patent asserted in the complaint, raises a threshold question regarding the viability of this infringement count.
9,335,255 Patent Infringement Allegations
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) activating a light source as the light source is traversed along a roadway to illuminate an area that includes at least one reflective surface on a road marker... | The Accused Products activate a light source, alleging that HERE's HD Mapping system uses LiDAR to illuminate an area on a roadway. | ¶75 | col. 7:61-65 |
| (b) determining a plurality of light intensity values with at least one intensity sensor directed to cover a field of view which includes at least a portion of the area illuminated by the light source | The Accused Products determine multiple light intensity values, alleging that HERE's HD Maps rely on LiDAR to function as the intensity sensor. | ¶76 | col. 8:10-17 |
| (c) using a computer processing system configured to: (i) identify a portion of at least one light intensity value... associated with one of the at least one reflective surface of the road marker | The computer systems in the Accused Products allegedly detect road markers by identifying reflected light intensity from a LiDAR sensor. | ¶78 | col. 8:21-25 |
| (c) ... (ii) analyze the portion of the at least one light intensity value... to determine an assessment of the reflective characteristic of the road marker. | The computer systems in the Accused Products allegedly analyze the light intensity values to determine an assessment of the road marker's reflective characteristic. | ¶79 | col. 8:49-53 |
9,671,328 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) an active light sensor that is traversed along a roadway that includes at least one reflective surface on a road marker... | The Accused Products allegedly have an active light sensor that travels along a roadway, with LiDAR sensors serving as both the light source and the light sensor. | ¶¶99-101 | col. 8:1-8 |
| (b) a computer processing system operably connected to the active light sensor and configured to detect objects of interest within the field of view... | The Accused Products allegedly include an operably connected computer processing system, where LiDAR data is used to detect objects like lane markers. | ¶102 | col. 8:21-24 |
| (b) ... for each object of interest: (i) determine whether the object of interest includes at least one light intensity value associated with a reflective surface of a road marker... | For each detected object, the Accused Products allegedly determine if it has an intensity value associated with a reflective road marker, such as a lane marker. | ¶103 | col. 8:31-38 |
| (b) ... (ii) analyze the at least one light intensity value to determine an assessment of a discrete location of the road marker within the field of view. | The Accused Products allegedly analyze the intensity value to assess the discrete location of features like lane markers. | ¶104 | col. 8:10-14 |
Identified Points of Contention:
- Scope Questions: A primary question will be whether a LiDAR-based system falls within the scope of the patent claims. For instance, does the term "intensity sensor", as described in the context of capturing 2D "intensity frames" in the patent specification, read on the point-by-point detection mechanism of a typical LiDAR unit?
- Technical Questions: What evidence does the complaint provide that HERE's system performs the specific analysis required by the claims? For the ’255 Patent, this involves showing that the system determines an "assessment of the reflective characteristic," which the patent describes as calculating retroreflectivity or classifying sheeting type. For the ’328 Patent, the analysis must yield an "assessment of a discrete location." The infringement analysis may turn on whether the accused system's function is merely to generate a 3D point cloud or if it performs these specific claimed analytical steps.
V. Key Claim Terms for Construction
The Term: "intensity sensor" (’255 Patent, cl. 12; ’328 Patent, cl. 9)
- Context and Importance: The infringement theory for both patents rests on the allegation that a "LiDAR... acts as the intensity sensor" (Compl. ¶76). The construction of this term is therefore central. A narrow construction may exclude LiDAR technology, while a broad one may encompass it.
- Intrinsic Evidence for a Broader Interpretation: The claims do not limit the sensor to a specific technology, only requiring that it perform the function of "determining a plurality of light intensity values" (’255 Patent, cl. 12).
- Intrinsic Evidence for a Narrower Interpretation: The specification consistently describes the sensor in the context of capturing "frames" of data (e.g., "reflected light intensity frames 420") and discloses a "black and white camera" as a preferred embodiment, which could suggest the inventor contemplated a 2D imaging device rather than a scanning laser system (’255 Patent, col. 9:48-54; Fig. 6).
The Term: "assessment of the reflective characteristic" (’255 Patent, cl. 12)
- Context and Importance: Practitioners may focus on this term because it defines the required analytical outcome for infringement of the ’255 Patent. The dispute will question what level of analysis satisfies this limitation—is merely detecting reflectivity sufficient, or is a quantitative or qualitative evaluation required?
- Intrinsic Evidence for a Broader Interpretation: The term "assessment" is not explicitly defined and could be argued to encompass any evaluation, including a binary determination that a surface is or is not reflective.
- Intrinsic Evidence for a Narrower Interpretation: The specification provides detailed examples of this "assessment," such as calculating a specific retroreflectivity value (R_A) and using a threshold algorithm to classify the sign's sheeting material (e.g., Type I, III, or VII). A court might be persuaded that the claim scope is limited to these more complex, disclosed assessments (’255 Patent, col. 5:27-62; Figs. 14A-14B).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for both patents, asserting that HERE knowingly "encouraged, directed, aided, and abetted the use and operation of the Accused Products" by its customers and staff, including through its "promotions and instructions" (Compl. ¶¶90, 92, 117, 119).
- Willful Infringement: Willfulness is alleged based on both pre- and post-suit knowledge. The complaint alleges pre-suit knowledge stemming from 2006 business discussions where HERE's predecessor was allegedly made aware of the patent family, and from a January 2017 notice of infringement letter sent by Facet to HERE (Compl. ¶¶82, 109).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical translation: Does HERE's LiDAR-based system, which functions by generating and analyzing a 3D point cloud, meet the limitations of the patent claims, which are described in the context of a system that captures and analyzes a series of 2D "intensity frames"? The outcome will likely depend on the court's construction of key terms such as "intensity sensor."
- A dispositive threshold issue for Count I is the effect of the post-complaint disclaimer of claim 12 of the ’255 Patent. The court will have to address whether this statutory disclaimer, which covers the only asserted claim from that patent, moots the infringement allegation and what strategic implications this carries for the remainder of the case.
- A key evidentiary question will be one of functional purpose: Does the evidence show that HERE's accused system performs the specific analytical functions required by the claims (assessing a "reflective characteristic" for the ’255 Patent and a "discrete location" for the ’328 Patent), or is the complaint's theory a re-characterization of a system that was designed and operates for a fundamentally different technical purpose?