Secure Matrix LLC v. Dal Tile Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Secure Matrix LLC (DE)
  • Defendant: Dal-Tile Corporation (DE)
  • Plaintiff’s Counsel: Rabicoff Law LLC
• Case Identification: 2:24-cv-01084, E.D. Tex., 12/30/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has an established place of business in the district and has committed acts of patent infringement in the district, causing harm to the Plaintiff there.
• Core Dispute: Plaintiff alleges that unspecified products of the Defendant infringe a patent related to multi-device user authentication and verification systems.
• Technical Context: The technology concerns methods for securely authenticating users for online services or payments by using a personal electronic device (like a smartphone) to interact with an identifier (like a QR code) displayed by another computer.
• Key Procedural History: The complaint does not allege any prior litigation, inter partes review proceedings, or licensing history related to the patent-in-suit. The claim of willful infringement is based on knowledge gained only upon service of the present complaint.

Case Timeline

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

U.S. Patent No. 8,677,116 - Systems and methods for authentication and verification

Issued March 18, 2014

The Invention Explained

• Problem Addressed: The patent identifies a "growing need to authenticate users" for secure online portals and real-world devices, as well as a need for "secure and fast online electronic payment" capabilities ('116 Patent, col. 1:19-28).
• The Patented Solution: The invention describes a multi-part authentication system designed to separate the user's primary interaction (e.g., on a PC) from the verification step (e.g., on a smartphone). A computer provides a "reusable identifier" (such as a QR code) to both the user and a remote "verification server" ('116 Patent, col. 2:30-49). The user's personal electronic device scans or receives this identifier, combines it with "user verification information," and sends this package to the verification server. The server then evaluates the information to determine if the user is authorized and, if so, transmits an authorization signal to complete the login or transaction ('116 Patent, Fig. 2; Abstract).
• Technical Importance: The use of "reusable identifiers" that do not contain sensitive transaction or user-specific data is presented as an advantage, potentially simplifying the system, reducing server load, and increasing security compared to generating unique, complex identifiers for every transaction ('116 Patent, col. 6:35-62).

Key Claims at a Glance

• The complaint does not specify which claims are asserted, instead referring to the "Exemplary '116 Patent Claims" identified in an attached exhibit (Compl. ¶11). Independent claim 1 is representative of the invention's core method.
• Independent Claim 1:
  • Using a computer system to receive a first signal from a computer providing a secured capability, where the signal comprises a "reusable identifier" assigned for a "finite period of time."
  • Using the computer system to receive a second signal from a user's electronic device, where the second signal comprises a copy of the reusable identifier and "user verification information."
  • Using a processor to evaluate, based on the first and second signals, whether the user is authorized.
  • In response to an authorization, transmitting a third signal with authorization information to the electronic device and/or the computer providing the secured capability.
• The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

The complaint does not name any specific accused products in its main body. It refers generally to "Defendant products" and "Exemplary Defendant Products" that are identified in charts incorporated as Exhibit 2 (Compl. ¶11).

Functionality and Market Context

The complaint alleges that the accused products "practice the technology claimed by the '116 Patent" (Compl. ¶16). It states that Defendant makes, uses, sells, and imports these products and provides "product literature and website materials" that instruct end users on their infringing use (Compl. ¶¶11, 14). The complaint does not provide sufficient detail for analysis of the accused instrumentality's specific functionality or market position.

IV. Analysis of Infringement Allegations

The complaint incorporates infringement allegations by reference to "the attached claim charts" in Exhibit 2, which was not provided with the filed complaint (Compl. ¶¶13, 16-17). The narrative alleges that the "Exemplary Defendant Products" practice the claimed technology and "satisfy all elements of the Exemplary '116 Patent Claims," either literally or under the doctrine of equivalents (Compl. ¶16). Without access to Exhibit 2, a detailed element-by-element analysis of the infringement allegations is not possible.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

• The Term: "reusable identifier"

• Context and Importance: This term is central to the patent's purported novelty, distinguishing it from systems using "one-time-use" identifiers ('116 Patent, col. 9:14-21). The infringement analysis will depend on whether the accused system's identifiers can be used more than once by different users or for different transactions, as described in the patent.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent defines "reusable" as an "identifier that can be used more than once" and is "not unique to one particular user or transaction, or both" ('116 Patent, col. 9:8-13). This could be interpreted to cover any identifier that is not strictly single-use.
  • Evidence for a Narrower Interpretation: The specification describes a specific "round robin usage" where a "predefined and previously generated list" of identifiers is cycled through ('116 Patent, col. 9:22-41). A defendant may argue this context limits the term to pre-generated, systematically reused identifiers, not merely any token that is technically capable of being used more than once.

• The Term: "assigned for use... for a finite period of time"

• Context and Importance: This limitation in claim 1 requires that the reusability of the identifier is temporally constrained. Proving infringement will require evidence that the accused system assigns identifiers with a specific, predetermined lifespan.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: "Finite period" could be read broadly to cover any non-permanent assignment, such as a token that expires at the end of a browser session.
  • Evidence for a Narrower Interpretation: The specification provides specific examples, stating identifiers "are each only valid for a finite and predetermined period of time (e.g., one or more minutes, one or more hours, one or more days)" ('116 Patent, col. 9:42-46). This language may support an argument that the "period" must be a predetermined duration, not just an indefinite period that terminates upon a certain event (like logging out).

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendant distributes "product literature and website materials" that instruct and encourage end users to use the accused products in a manner that directly infringes the ’116 Patent (Compl. ¶14). The specific materials are referenced as being in Exhibit 2 (Compl. ¶14).
• Willful Infringement: The allegation of willfulness is based on post-suit conduct. The complaint asserts that service of the complaint itself provides Defendant with "actual knowledge" and that any continued infringement thereafter is willful (Compl. ¶¶13-14).

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

• A foundational issue will be one of evidentiary sufficiency: As the complaint's infringement allegations rely entirely on an external exhibit not included in the filing, a key question is whether Plaintiff can produce specific evidence mapping the features of an identified Dal-Tile product to each limitation of an asserted claim.
• The case will also turn on a question of definitional scope: The viability of the infringement claim will likely depend on claim construction. Specifically, can the term "reusable identifier... assigned for... a finite period of time" be construed to read on the tokens or identifiers used in the accused system, or will the defendant be able to distinguish its technology as using, for example, session-specific or one-time-use identifiers that fall outside the patent's specific "round robin" and "predetermined period" embodiments?