DCT
4:24-cv-00024
ASSA ABLOY Global Solutions Inc v. Liberty Access Tech Licensing LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ASSA ABLOY Global Solutions, Inc. (Texas)
- Defendant: Liberty Access Technologies Licensing LLC (Texas)
- Plaintiff’s Counsel: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
- Case Identification: 4:24-cv-00024, N.D. Ill., 02/07/23
- Venue Allegations: Plaintiff asserts that venue is proper in the Northern District of Illinois because Defendant previously initiated patent enforcement litigation in the district involving one of the patents-in-suit.
- Core Dispute: Plaintiff seeks a declaratory judgment that its mobile access products for hotel rooms do not infringe three patents owned by the Defendant related to systems for controlling access using a mobile device.
- Technical Context: The technology concerns mobile keyless entry systems, a significant feature in the modern hospitality industry for streamlining guest access and enhancing security.
- Key Procedural History: This declaratory judgment action follows prior litigation initiated by Defendant Liberty. Defendant has sued a customer of Plaintiff (Marriott) and corporate affiliates of Plaintiff in the Eastern District of Texas on the same family of patents. Defendant also previously filed Liberty Access Technologies Licensing LLC v. Hilton in the Northern District of Illinois, asserting the ’205 patent. The complaint notes that the ’205 patent was amended during a reexamination proceeding.
Case Timeline
| Date | Event |
|---|---|
| 2010-03-02 | Earliest Priority Date for all Patents-in-Suit (U.S. Provisional No. 61/309,813) |
| 2016-06-21 | U.S. Patent No. 9,373,205 Issues |
| 2018-05-23 | Defendant sues Hilton in N.D. Ill. on the ’205 patent |
| 2019-01-23 | Hilton case dismissed with prejudice |
| 2020-05-19 | U.S. Patent No. 10,657,747 Issues |
| 2022-06-28 | U.S. Patent No. 11,373,474 Issues |
| 2022-08-18 | Defendant sues Marriott (Plaintiff's customer) in E.D. Tex. |
| 2022-12-30 | Defendant sues Swedish affiliates of Plaintiff in E.D. Tex. |
| 2023-02-07 | Complaint for Declaratory Judgment 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 background describes the challenge for users of electric vehicles in finding and reserving a compatible charging station, and extends this access control problem to other contexts like hotel room locks. (’205 Patent, col. 1:35-44, col. 2:41-43).
- The Patented Solution: The invention provides a system where a user makes a reservation for a resource (like a hotel room) via a server, which then issues a "reservation certificate" to the user's portable device (e.g., a smartphone). The certificate contains a specific time interval for access. To unlock the door, the user presents the certificate from their device to the lock. The processor within the lock itself is responsible for comparing the time interval in the certificate to the current time to verify the reservation is valid before granting access. (Compl. ¶24-25; ’205 Patent, Abstract, col. 6:33-43).
- Technical Importance: The technology aimed to provide a secure and convenient method for managing temporary access to resources using a person's mobile phone, replacing physical keys or keycards. (Compl. ¶11).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of claims 1-24, which are rooted in independent claims 1 and 13, as amended by reexamination. (Compl. ¶23, 51-78).
- Amended Independent Claim 1 (An access device):
- An access device with a processor controlling a door lock and a communication module.
- The processor is configured to receive a "reservation certificate" from a portable terminal.
- The certificate comprises an "interval of a reservation."
- The processor is configured to "compare the interval... to a current time accessible to the processor" and "determine the current time is within the interval."
- The processor activates the door lock based on this determination.
- Amended Independent Claim 13 (A method):
- Accepting, by a processor, a "reservation certificate" that comprises an "interval of a reservation."
- Determining, by the processor, that the certificate is current by "comparing the interval of the reservation to a current time" and determining the current time is within that interval.
- Activating a door lock on the basis of the certificate being current.
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 flexible system to reserve and activate access to a location, such as a hotel room, using different electronic devices for different parts of the process. (’747 Patent, col. 2:8-21).
- The Patented Solution: The invention describes an access control system with a specific architecture. A user makes a reservation request on a "first device" (e.g., a desktop computer). A server then issues a "reservation certificate" and a corresponding communication setting to a "second device" (e.g., a smartphone) that is distinct from the first. An application on the second device uses the communication setting to wirelessly transmit the certificate to the door lock, which then activates. (’747 Patent, Claim 1; Compl. ¶30).
- Technical Importance: This approach decouples the act of booking from the act of access, allowing a user to, for example, make a reservation on a work computer and receive the key on their personal mobile phone. (’747 Patent, Claim 1).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of claims 1-14, based on independent claims 1 and 13. (Compl. ¶29, 84-107).
- Independent Claim 1 (An access control system):
- A reservation interface receives a request from a "first device."
- A server issues a "reservation certificate" describing an interval and transmits it to a "second device distinct from the first device."
- An application on the second device receives the certificate and wirelessly transmits it to the access device (lock).
- The access device receives the certificate and its processor activates the door lock.
- Independent Claim 13 (An access control system):
- An access device (lock) with a Bluetooth transceiver restricting access to a room.
- A reservation server receives a request for a room and interval.
- The server issues a "reservation certificate" and transmits it to an application on a smartphone.
- The smartphone application wirelessly transmits the certificate via Bluetooth to the access device.
- The access device receives the certificate and its processor activates the 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 describes a system where a server provides a "reservation certificate" to an application on a portable terminal. In this configuration, the application on the portable terminal is responsible for comparing the reservation interval to the current time to determine if the certificate is valid. If it is, the application then communicates with the access device to activate the door lock. (Compl. ¶35, 113; ’474 Patent, Claim 1). This architecture differs from the ’205 patent by placing the time-comparison logic in the mobile app instead of the lock itself.
- Asserted Claims: Independent claims 1, 8, 15, and 26. (Compl. ¶34).
- Accused Features: Plaintiff's Mobile Access system, where a smartphone application receives a mobile key and communicates with the VingCard locks. (Compl. ¶40, 109).
III. The Accused Instrumentality
Product Identification
- The Plaintiff’s mobile access system, which includes the ASSA ABLOY Global Solutions Mobile Access App, a Software Development Kit (SDK), VingCard Classic and Essence Electronic Locks, Visionline software, and Vostio Access Management cloud services. (Compl. ¶40).
Functionality and Market Context
- The system provides keyless entry for hotel guests by "generating an encrypted digital key that is transmitted to users' smart devices and safely stored in a key vault on a mobile app." (Compl. ¶12). When the guest presents their mobile device to the door lock, the app "transmits digital key information over a secure communication channel" to unlock the door. (Compl. ¶12, 58). The complaint includes a marketing graphic explaining that this allows guests to bypass the front desk and go directly to their room. (Compl. ¶11, p. 5). The system is presented as a "mainstream hotel amenity." (Compl. ¶17).
IV. Analysis of Infringement Allegations
’205 Patent Infringement Allegations
| Claim Element (from Amended Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| the processor is configured to receive a reservation certificate (5) presented by a portable terminal (4) through the communication module | The system’s door lock processor does not receive a "reservation certificate"; it receives an encrypted "mobile key" which Plaintiff argues is a distinct data structure. | ¶51-52, 63-64, 75 | col. 10:28-36 |
| the processor is configured to compare the interval of the reservation of the current reservation certificate to a current time accessible to the processor, [and] determine the current time is within the interval of the reservation | The processor in the door lock is not configured to perform this comparison. The lock decrypts the received mobile key to unlock the door, but the time-validation logic is not performed at the lock. | ¶55-56, 67-68, 76 | col. 10:40-45 |
- Identified Points of Contention:
- Scope Questions: A primary issue is whether the term "reservation certificate," as defined and described in the patent, can be construed to read on the "mobile key" used by Plaintiff's system. Plaintiff alleges its key does not comprise an "interval of a reservation" for the lock to compare. (Compl. ¶53-54, 66).
- Technical Questions: A key factual dispute concerns the locus of operation: does the processor in the access device (the lock) perform the time-comparison function as required by the claim? Plaintiff provides a product description stating its lock receives and decrypts a key, and alleges the lock "does not include a processor that compares an interval to a current time." (Compl. ¶56, 58, p. 17).
’747 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| issue a reservation certificate describing the interval of the reservation based on the reservation request and the selected location | Plaintiff's system issues a "mobile key," which it alleges is not a "reservation certificate" and does not "describe" a reservation interval in the manner claimed. | ¶84-85, 87 | col. 9:15-18 |
| an application installed on the second device to receive the reservation certificate | The application receives a "mobile key," which Plaintiff contends is functionally and structurally different from the claimed "reservation certificate." | ¶88-89 | col. 9:22-24 |
| the processor [of the access device] activates the door lock based on at least the receipt of the reservation certificate | The door lock activates after decrypting the mobile key, not "based on... receipt of [a] reservation certificate" as that term is used in the patent. | ¶90-91 | col. 9:31-33 |
- Identified Points of Contention:
- Scope Questions: As with the ’205 patent, the dispute centers on the proper construction of "reservation certificate." Plaintiff argues its "mobile key" is not what is claimed, particularly because it allegedly does not "describe the interval of the reservation" to the lock. (Compl. ¶87).
- Technical Questions: The analysis may focus on the data and logic flow. The claim requires the lock to activate "based on at least the receipt of the reservation certificate." Plaintiff alleges its lock activation is based on a different mechanism (successful decryption of a key), raising the question of whether this meets the claimed limitation. (Compl. ¶91, 93). A product guide excerpt is provided to support the allegation that the solution works by transmitting an "encrypted digital key" that the lock decrypts. (Compl. ¶58, p. 17).
V. Key Claim Terms for Construction
The Term: "reservation certificate"
Context and Importance: This term is central to the non-infringement arguments for all three patents. Plaintiff's core position is that its "mobile key" is not a "reservation certificate." The construction of this term—specifically, whether it requires an explicit time interval to be part of the data structure presented to the lock—will be critical to the infringement analysis. (Compl. ¶52, 75, 87).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (favoring Defendant): The specification describes the term broadly as a "digital token or certificate" which can be sent to a portable terminal. (’747 Patent, col. 2:18-19). This general language could be argued to encompass any digital credential that enables access for a reserved period.
- Evidence for a Narrower Interpretation (favoring Plaintiff): The specification and claims repeatedly and explicitly link the certificate to specific data, stating it "describ[es] the interval of the reservation" and has a "start time and duration." (’747 Patent, Claim 1; col. 2:27-30). Patent Figure 2 explicitly shows fields for "START TIME" and "DEVICE ID" within the certificate. Plaintiff will likely argue that these specific disclosures limit the term to a data structure containing these explicit fields.
The Term: "processor ... configured to compare the interval of the reservation to a current time" (in the ’205 Patent)
Context and Importance: This limitation defines the location of the core intelligence in the ’205 patent's system. Practitioners may focus on this term because Plaintiff's non-infringement argument rests on its allegation that this comparison does not happen in its locks, but elsewhere in the system (if at all). (Compl. ¶55-56).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (favoring Defendant): The term is functional. A patentee could argue that any processing within the lock that results in a time-based access decision satisfies this element, even if it is not a direct numerical comparison of start/end times.
- Evidence for a Narrower Interpretation (favoring Plaintiff): The detailed description explicitly states that the charger (the analogous access device) checks the reservation time against its "internal time-of-day/date clock 8" before allowing access. (’205 Patent, col. 5:8-12). This supports a construction requiring the comparison logic to be physically located within the access device itself.
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaratory judgment of non-infringement and explicitly denies any direct or indirect infringement under the doctrine of equivalents for all asserted patents. (Compl. ¶77, 104, 155).
- Willful Infringement: The complaint does not contain allegations of willfulness. However, it establishes a basis for which Defendant Liberty could later allege willful infringement against the Plaintiff, noting that Defendant has already sued Plaintiff's customer (Marriott) and its corporate affiliates, thereby providing Plaintiff with pre-suit knowledge of the patents and the infringement allegations. (Compl. ¶16-17, 36-37).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "reservation certificate," which the patents describe as containing an explicit reservation interval, be construed to cover the "encrypted digital key" allegedly used by Plaintiff's system? The outcome may depend on the specific data structure of the "mobile key" and whether it is found to "describe" or "comprise an interval" in the manner required by the claims.
- A key evidentiary question will be one of technical locus: for the ’205 patent, where does the time-validity check occur? The case may turn on factual evidence demonstrating whether the processor inside Plaintiff's lock performs the claimed comparison of a reservation interval to a current time, or if that function resides elsewhere in the system, creating a mismatch with the claim language.
- A third central question relates to system architecture: for the '747 patent, does Plaintiff's system, in practice, utilize a "first device" for making a reservation and a "second device" for receiving the access credential in the distinct manner required by the claims, or is the process more integrated in a way that falls outside the claim scope?