DCT

2:24-cv-00374

Honeywell Intl Inc v. Scandit AG

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00374, E.D. Tex., 05/21/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts business in the district, has offered for sale and sold infringing products in the district, and makes its technology available through app stores accessible in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s software-based data capture platform and associated hardware accessories infringe six patents related to barcode scanning, user interfaces for mobile scanning, and augmented reality data overlays.
  • Technical Context: The technology concerns high-performance barcode and data capture using general-purpose mobile devices (e.g., smartphones), a critical function in modern retail, logistics, and industrial operations.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of infringement for U.S. Patent Nos. 8,985,461 and 9,696,612 on May 16, 2019, and for U.S. Patent Nos. 10,803,274 and 9,818,013 on February 21, 2023, which may form the basis for allegations of willful infringement.

Case Timeline

Date Event
2012-06-29 Earliest Priority Date ('274, '958, '952 Patents)
2012-11-15 Earliest Priority Date ('013 Patent)
2013-02-20 Earliest Priority Date ('612 Patent)
2013-06-28 Earliest Priority Date ('461 Patent)
2015-03-24 '461 Patent Issued
2017-07-04 '612 Patent Issued
2017-11-14 '013 Patent Issued
2019-05-16 Plaintiff sends first notice letter to Defendant regarding '461 and '612 Patents
2020-10-13 '274 Patent Issued
2022-05-31 '958 Patent Issued
2023-02-21 Plaintiff sends second notice letter to Defendant regarding '274 and '013 Patents
2023-11-07 '952 Patent Issued
2024-05-21 Complaint Filed

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

U.S. Patent No. 8,985,461 - “Mobile Device Having an Improved User Interface for Reading Code Symbols”

  • Issued: March 24, 2015

The Invention Explained

  • Problem Addressed: The patent’s background section notes that general-purpose mobile devices like smartphones, unlike dedicated scanners, typically lack physical aiming indicators and intuitive triggers, which can cause user confusion when scanning barcodes, especially when multiple codes are in the camera’s field of view (’461 Patent, col. 2:5-33).
  • The Patented Solution: The invention provides a user interface for a mobile device that captures and displays a real-time image containing a code symbol. The device's processor then determines if the symbol is "readable" and, if so, displays a "positive indicator" overlaying the readable symbol on the screen, confirming for the user that the symbol is properly targeted and ready for decoding (’461 Patent, Abstract; col. 2:42-52). This process provides immediate visual feedback that a conventional aiming reticle does not.
  • Technical Importance: This technology aimed to improve the usability and reliability of smartphones for enterprise-level scanning tasks, making them more competitive with purpose-built scanning hardware (’461 Patent, col. 1:65-col. 2:4).

Key Claims at a Glance

  • The complaint asserts independent claim 13 of the ’461 Patent (Compl. ¶38).
  • Essential elements of claim 13, a method claim, include:
    • Providing a mobile device with a camera, display, and processor.
    • Capturing an image including a code symbol.
    • Displaying the image on the visual display.
    • Determining with the processor whether the code symbol is readable.
    • Displaying a "positive indicator" overlaying the code symbol when the processor determines the symbol is readable.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 9,696,612 - “Optical Redirection Adapter”

  • Issued: July 4, 2017

The Invention Explained

  • Problem Addressed: The patent describes that using the back-facing camera on a typical smartphone for scanning is not ergonomic, as users must hold the device in a way that is counterintuitive for aiming. Pointing the top edge of the device at a target is more natural, but this orients the camera downwards, away from the target (’612 Patent, col. 1:26-41).
  • The Patented Solution: The invention is a physical adapter that attaches to an electronic device. The adapter contains an optical element, such as a prism or mirror, that redirects the camera's field of view by approximately 90 degrees. This allows a user to aim the edge of the device at a barcode while the camera captures a forward-facing image, mimicking the ergonomics of a dedicated scanner (’612 Patent, Abstract; col. 2:45-54; Fig. 1).
  • Technical Importance: This hardware solution enables general-purpose mobile devices to be used more comfortably and efficiently in high-volume scanning applications, bridging a key ergonomic gap between smartphones and dedicated industrial scanners (’612 Patent, col. 1:39-44).

Key Claims at a Glance

  • The complaint asserts independent claim 1 of the ’612 Patent (Compl. ¶54).
  • Essential elements of claim 1, an apparatus claim, include:
    • A housing with an opening shaped to receive an electronic device.
    • An optical element (e.g., prism, mirror, lens) attached to the housing.
    • The optical element is positioned in the camera's field of view when the device is inserted.
    • The optical element reflects light into the camera's field of view from a redirection angle of approximately 90 degrees.
    • The optical element also reflects light from an illumination element on the device at the same redirection angle.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

Multi-Patent Capsule: U.S. Patent No. 9,818,013 - “Mobile Computer Configured to Read Multiple Decodable Indicia”

  • Issued: November 14, 2017
  • Technology Synopsis: This patent relates to systems for efficiently processing multiple barcodes present in a single camera view. The technology involves acquiring an image, decoding multiple indicia within it, visually marking the successfully decoded indicia on the display, and then allowing a user to select one of the marked indicia to transmit its corresponding data (’013 Patent, Abstract).
  • Asserted Claims: At least independent claim 7 is asserted (Compl. ¶69).
  • Accused Features: The complaint accuses Scandit's Smart Data Capture Platform of infringing this patent (Compl. ¶69).

Multi-Patent Capsule: U.S. Patent No. 10,803,274 - “Computer Configured to Display Multimedia Content”

  • Issued: October 13, 2020
  • Technology Synopsis: This patent addresses technology akin to augmented reality for data capture. It describes a system that locates and decodes indicia (e.g., barcodes) within displayed content like a video stream, and then embeds the resulting decoded data back into the displayed content, for example as a visual overlay (’274 Patent, Abstract).
  • Asserted Claims: At least independent claim 10 is asserted (Compl. ¶85).
  • Accused Features: The complaint accuses Scandit's Smart Data Capture Platform, particularly its augmented reality features, of infringing this patent (Compl. ¶¶85, 91).

Multi-Patent Capsule: U.S. Patent No. 11,347,958 - “Computer Configured to Display Multimedia Content”

  • Issued: May 31, 2022
  • Technology Synopsis: Continuing the technology family of the ’274 Patent, this patent also relates to analyzing a stream of content (e.g., video) to identify and decode indicia. The invention generates a "displayable content overlay" derived from the decoded message, which can include the message itself, data derived from it, or a flag indicating success, and displays it with the content stream (’958 Patent, Abstract, Claim 1).
  • Asserted Claims: At least independent claim 10 is asserted (Compl. ¶101).
  • Accused Features: The complaint accuses Scandit's Smart Data Capture Platform of infringing this patent (Compl. ¶101).

Multi-Patent Capsule: U.S. Patent No. 11,809,952 - “Computer Configure to Display Multimedia Content”

  • Issued: November 7, 2023
  • Technology Synopsis: Also in the same family as the ’274 and ’958 patents, this patent covers deriving data from a decoded message (e.g., retrieving web content from a URL in a QR code) and embedding that derived data into the content stream as an overlay. This allows for displaying richer information than what is contained in the barcode itself (’952 Patent, Abstract, Claim 1).
  • Asserted Claims: At least independent claim 1 is asserted (Compl. ¶117).
  • Accused Features: The complaint accuses Scandit's Smart Data Capture Platform of infringing this patent (Compl. ¶117).

III. The Accused Instrumentality

Product Identification

  • The complaint names two categories of accused instrumentalities: "Scandit's Smart Data Capture Platform" and the "Scandit Case" (Compl. ¶¶38, 54).

Functionality and Market Context

  • The Smart Data Capture Platform is described as software that enables smart devices like smartphones, drones, and robots to capture data from barcodes, text, and objects to "automate end-to-end processes and provide actionable insights" (Compl. ¶16). The complaint alleges the platform offers "unmatched speed, accuracy and intelligence" and can scan up to three times faster than dedicated scanners (Compl. ¶¶16-17). The complaint provides a visual comparison of 1D and 2D barcodes to illustrate the increased data density that necessitated the development of advanced scanning technologies (Compl. p. 4). The "Scandit Case" is identified as a physical product that embodies the invention of the ’612 Patent, suggesting it is a hardware accessory for a mobile device (Compl. ¶54).

IV. Analysis of Infringement Allegations

The complaint references non-limiting claim charts attached as exhibits to substantiate its infringement allegations (Compl. ¶¶40, 56). As these exhibits were not provided with the complaint, the following is a narrative summary of the infringement theories presented.

’461 Patent Infringement Allegations

Honeywell alleges that Scandit's Smart Data Capture Platform, when operating on a mobile device, directly infringes at least claim 13 of the ’461 Patent (Compl. ¶38). The theory suggests that the platform's software performs each step of the claimed method: it uses the device's camera to capture and display an image containing a barcode, determines if that barcode is readable, and displays a graphical overlay on the screen that serves as the claimed "positive indicator" to provide feedback to the user (Compl. ¶¶38-40).

’612 Patent Infringement Allegations

Honeywell alleges that a physical product, the "Scandit Case," directly infringes at least claim 1 of the ’612 Patent (Compl. ¶54). The complaint's theory is that the Scandit Case is a hardware adapter that attaches to a mobile device and contains an optical system. This system allegedly redirects the field of view of both the device's camera and its illumination source by approximately 90 degrees, thereby meeting the structural and functional limitations of the claim for an ergonomic scanning accessory (Compl. ¶¶54-56).

Identified Points of Contention

  • Scope Questions: For the ’461 Patent, a central question may be whether Scandit’s on-screen graphics constitute a “positive indicator” as claimed. The dispute could focus on whether the graphic is merely a static aiming guide or if it dynamically appears in response to the processor’s determination of a barcode's readability, as the claim requires. For the ’612 Patent, the dispute may involve whether the "Scandit Case" is properly characterized as an "optical redirection adapter" or if it is a multi-function case where the optical features are merely incidental.
  • Technical Questions: A key technical question for the ’461 Patent allegations is what evidence demonstrates that Scandit's software performs the specific step of "determining whether the code symbol... is readable" prior to and as a condition for displaying the alleged "positive indicator." For the ’612 Patent, the analysis will question whether the Scandit Case redirects light from an "illumination element" in addition to the camera, as required by claim 1.

V. Key Claim Terms for Construction

The Term: "positive indicator" (from ’461 Patent, claim 13)

  • Context and Importance: The definition of this term is critical to the infringement analysis for the ’461 Patent. Practitioners may focus on this term because its scope will determine whether a general-purpose aiming graphic infringes, or if the claim is limited to a confirmation graphic that appears only after a successful readability check by the processor.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification does not provide an explicit definition of the term, which could support an argument for its plain and ordinary meaning as any indicator that positively aids the user.
    • Evidence for a Narrower Interpretation: The claim language requires displaying the indicator "when the processor determines that the code symbol in the image is readable" (’461 Patent, col. 10:11-15). The specification describes this as providing feedback that the device is "ready and able to read that code symbol" (’461 Patent, col. 5:47-51). This language suggests a conditional, event-driven graphic that confirms readability, rather than a persistent aiming guide.

The Term: "optical redirection adapter" (implicit in claim 1 of the ’612 Patent)

  • Context and Importance: This term defines the nature of the accused "Scandit Case." Its construction will determine whether a protective case with an integrated optical element falls within the scope of a patent for an "adapter."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent describes the invention as an "accessory for an electronic device" and a "housing for attaching to the electronic device," which could support a broad reading covering any attachable accessory performing the claimed function (’612 Patent, col. 1:45-48, claim 1).
    • Evidence for a Narrower Interpretation: The patent's title, abstract, and summary consistently refer to the invention as an "adapter," which suggests a device whose primary purpose is to adapt the optical path of the camera, not to serve other functions like device protection (’612 Patent, Title; Abstract).

VI. Other Allegations

Indirect Infringement

  • The complaint alleges both induced and contributory infringement for all six asserted patents. The inducement allegations are based on Scandit's alleged provision of "marketing and sales materials," "instructional materials," and "instructional videos published by Scandit on YouTube" that allegedly instruct customers on how to use the Smart Data Capture Platform in an infringing manner (Compl. ¶¶44, 60, 75, 91, 107, 123).

Willful Infringement

  • The complaint alleges willful infringement for all asserted patents. For the ’461, ’612, ’013, and ’274 Patents, the allegations are based on alleged pre-suit knowledge stemming from notice letters sent in May 2019 and February 2023 (Compl. ¶¶43, 59, 74, 90). For the more recently issued ’958 and ’952 Patents, willfulness is alleged based on knowledge acquired "since at least the filing of this Complaint," establishing a basis for potential post-suit willfulness (Compl. ¶¶106, 122).

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

  • A core issue will be one of functional specificity: for the software-related patents (’461, ’013, ’274, ’958, ’952), the case will likely examine whether Scandit’s accused platform performs the specific, conditional, and sequential functions required by the claims (e.g., determining readability before displaying an indicator), or whether it provides general-purpose functionality that does not map directly onto the patented methods.
  • A second key question will be one of structural identity: for the hardware-related patent (’612), the analysis will turn on a direct structural comparison between the "Scandit Case" and the elements of the claimed "optical redirection adapter," including its housing, optical element, and its effect on both the camera and an illumination source.
  • Finally, a central question for damages will be willfulness and intent. Given the complaint’s specific allegations of pre-suit notice dating back to 2019, the court’s determination of willfulness will depend heavily on evidence of Scandit's actions or inactions after being made aware of the asserted patents.