DCT
4:24-cv-00752
Zito LLC v. WW Grainger Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Zito, LLC (Maryland)
- Defendant: WW. Grainger, Inc. (Illinois)
- Plaintiff’s Counsel: DNL Zito
- Case Identification: 4:24-cv-00752, E.D. Tex., 08/21/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains multiple regular and established places of business within the district, including locations in Plano and Longview where it sells and services the accused products.
- Core Dispute: Plaintiff alleges that Defendant’s "KeepStock CMI" industrial vending machines and related inventory management solutions infringe three patents directed to user-specific dispensing systems.
- Technical Context: The technology at issue involves automated vending systems that control access to items by identifying a user and dispensing products based on that user's specific characteristics or permissions.
- Key Procedural History: The complaint does not allege any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-17 | Earliest Priority Date for ’461, ’239, and ’364 Patents |
| 2020-12-15 | U.S. Patent No. 10,867,461 Issues |
| 2021-09-21 | U.S. Patent No. 11,127,239 Issues |
| 2023-07-25 | U.S. Patent No. 11,710,364 Issues |
| 2024-08-21 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,867,461 - "User-Specific Dispensing System"
- Issued: December 15, 2020 (’461 Patent)
The Invention Explained
- Problem Addressed: The patent describes a market need for a system that can provide targeted, on-site samples of products to consumers without requiring a later redemption step. Prior art promotional systems, such as those issuing coupons or discounts, do not physically dispense a tangible, customized item to a specific user at the point of interaction (’461 Patent, col. 1:31-43, col. 2:5-16).
- The Patented Solution: The invention is a system that uses a user-identifier (e.g., an RFID tag or bar code) to access information about a particular user. A processor interprets this user-specific information—such as age, gender, or preferences—to select an appropriate item from a storage compartment and automatically dispense it on-site (’461 Patent, Abstract; col. 4:25-57). Figure 1 illustrates this process, showing a user (100) presenting an identifier (200) to a machine that selects and dispenses an item (508) from storage (600, 602, etc.).
- Technical Importance: This approach automates and personalizes on-site product sampling, aiming to increase marketing effectiveness by delivering relevant items directly into the hands of a targeted consumer (’461 Patent, col. 1:28-32).
Key Claims at a Glance
- The complaint asserts claims 1-55, including independent claim 1 (Compl. ¶10).
- Essential elements of independent claim 1 include:
- An input device for accepting user-specific information.
- At least one storage device and at least one dispensing device.
- A processor that interprets the user-specific information to select a type of item and a specific item based on a user characteristic (user location, biological profile, or user role).
- The processor sends a signal to automatically dispense the selected item.
- A negative limitation: "wherein the user cannot select a different type of item for that dispensation subsequent to the processor selecting the type of item."
U.S. Patent No. 11,127,239 - "User-Specific Dispensing System"
- Issued: September 21, 2021 (’239 Patent)
The Invention Explained
- Problem Addressed: As with the related ’461 Patent, this patent addresses the lack of automated, on-site systems for dispensing items customized to a specific user (’239 Patent, col. 1:31-43).
- The Patented Solution: The ’239 Patent claims a method, rather than a system, for user-specific dispensing. The method involves identifying a user, associating them with specific information (e.g., user role), selecting an appropriate type of item, and then explicitly "presenting the user with at least one choice" of that item type. Based on the user's response, a specific item is selected and automatically dispensed (’239 Patent, Abstract; col. 12:47-col. 13:5).
- Technical Importance: This method introduces an interactive selection step, allowing the user to make a final choice from a pre-filtered set of appropriate items, potentially enhancing the user experience compared to a purely system-driven selection.
Key Claims at a Glance
- The complaint asserts claims 1-17, including independent claim 1 (Compl. ¶10).
- Essential elements of independent method claim 1 include:
- Identifying a user and associating user-specific information.
- Selecting at least one type of item appropriate for the user.
- Presenting the user with at least one choice of the appropriate item type.
- Selecting a specific item based on the user's response to the presentation.
- Automatically dispensing the selected item.
- A negative limitation: "wherein the user cannot select a different type of item for that dispensation after the presenting the user with the at least one choice of the at least one type of item."
U.S. Patent No. 11,710,364 - "User-Specific Dispensing System"
- Issued: July 25, 2023 (’364 Patent)
Technology Synopsis
This patent claims a system for activating a "user-appropriate type of tool or type of machine" rather than just dispensing a consumable item. The invention uses coded instructions and a processor to select an item based on user-specific information (e.g., user role) and then activate a "release mechanism" to provide access to that tool or machine (’364 Patent, Abstract; Claim 1).
Asserted Claims & Accused Features
- Asserted Claims: Claims 1-16, including independent claim 1 (Compl. ¶10).
- Accused Features: The complaint alleges that Grainger's KeepStock CMI systems, which dispense items like tools and industrial supplies, infringe the claims of the ’364 Patent (Compl. ¶9, ¶20).
III. The Accused Instrumentality
Product Identification
- The accused products are the Grainger "KeepStock," "KeepStock Managed Inventory Solution," "KeepStock Secure," and "KeepStock CMI" vending systems (collectively, "KeepStock CMI") (Compl. ¶9).
Functionality and Market Context
- The KeepStock CMI is an industrial vending system designed to manage and control access to "critical inventory items" such as tools and personal protective equipment in a workplace (Compl. ¶9). The complaint alleges the system provides "point-of-use dispensing" by allowing employees to "scan their ID badge or enter their employee code to access authorized items" (Compl. ¶11). An image in the complaint shows various machine configurations, including coil, carousel, drawer, and locker types, indicating storage of diverse physical items (Compl. p. 10). The system's software allows administrators to set limits on access by "quantity, job, shift and total dollars," which provides "controlled consumption" and reduces unauthorized spend (Compl. ¶11).
IV. Analysis of Infringement Allegations
The complaint provides a visual, narrative-based claim chart for claim 1 of the ’461 Patent. The allegations are summarized in the table below. The complaint does not provide a detailed infringement theory or claim chart for the ’239 patent.
’461 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an input device capable of accepting user-specific information of a user; | The accused system includes an input screen and, as described in marketing materials, accepts user identification via an ID badge scan or employee code entry. A visual shows a touchscreen interface on a vending machine (Compl. p. 10). | ¶29; p. 10-11 | col. 12:48-52 |
| at least one storage device; | The accused system is offered in various physical formats, including coil, carousel, drawer, and locker configurations, for storing items. A visual in the complaint depicts these different storage types (Compl. p. 10). | ¶29; p. 10 | col. 12:53 |
| at least one dispensing device; | The accused system includes mechanisms to dispense items from its various storage configurations. The complaint cites marketing materials describing "Single or multi-item configurations for consumable or durable items" (Compl. p. 10). | ¶29; p. 10 | col. 12:54 |
| a processor to interpret the user-specific information and select a type of item for dispensing, and to further select a specific item...based on at least one characteristic known about the user...[e.g.,] a user role within a group; | The system's software processor interprets user ID information to control access. The complaint alleges this meets the "user role" limitation by allowing administrators to "set limits by quantity, job, shift and total dollars" to manage what an employee is authorized to access (Compl. p. 11). | ¶29; p. 11 | col. 12:55-65 |
| to send a signal based on the selected specific item to the dispensing device to automatically dispense the selected item; and | Upon user authentication and item selection, the system's processor signals the dispensing mechanism to release the item. A video still depicts a user retrieving an item from a machine (Compl. p. 12). | ¶29; p. 12 | col. 12:62-65 |
| wherein the user cannot select a different type of item for that dispensation subsequent to the processor selecting the type of item. | The complaint alleges this limitation is met through the system’s "Controlled consumption" feature, which "reduces unauthorized spend and shrinkage" by restricting what a user can access (Compl. p. 12). | ¶29; p. 12 | col. 12:67-col. 13:2 |
Identified Points of Contention
- Scope Questions: A central question may be whether the patent term "user-specific information," which is described in the specification with examples like "athletic preference, food preferences, music preferences" (’461 Patent, col. 4:33-36), can be construed to cover the employer-defined access permissions (e.g., "job, shift") allegedly used by the accused industrial vending system (Compl. p. 11).
- Technical Questions: The interpretation of the negative limitation "wherein the user cannot select a different type of item" will be critical. The parties may dispute the precise sequence of events: does the processor first select a "type" of item, thereby locking the user into a category, or does the user select from a broader menu of authorized items? The complaint's evidence for this element relies on a marketing phrase ("Controlled consumption"), and its direct mapping to the specific claim language raises a question for the court.
V. Key Claim Terms for Construction
The Term: "characteristic known about the user" (appearing in Claim 1 of all three patents-in-suit)
- Context and Importance: This term defines the data that drives the patented system's logic. Its construction is critical because the infringement case hinges on whether the accused system's use of employee "job," "shift," and spending "limits" (Compl. p. 11) falls within the claim's scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a wide range of examples, including "gender, name, address, age, athletic preference, food preferences, music preferences, etc." (’461 Patent, col. 4:33-36). Claim 1 itself explicitly includes "a user role within a group," which may support an interpretation that includes job functions or other group-based permissions.
- Evidence for a Narrower Interpretation: The patent’s background section frames the invention as a solution for consumer marketing and targeted sampling (’461 Patent, col. 1:24-36). This context may support an argument that the "characteristic" must be personal to the user (like a preference or demographic) rather than an administrative permission set by a third-party employer.
The Term: "wherein the user cannot select a different type of item for that dispensation subsequent to the processor selecting the type of item" (from ’461 Patent, Claim 1)
- Context and Importance: This negative limitation is a defining feature of the claim and its meaning is not immediately clear from the claim language alone. The infringement analysis will turn on what it means for the "processor" to "select" a "type of item" and at what point in the transaction this occurs.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: This could be interpreted to mean that once the system presents the user with a filtered set of options belonging to a certain "type" (e.g., safety gloves), the user cannot then navigate to a different "type" (e.g., wrenches) in the same transaction. The specification does not appear to explicitly define "type of item."
- Evidence for a Narrower Interpretation: The language could be interpreted more strictly to mean the user has no selection ability whatsoever after the processor makes its initial determination. The patent also claims an embodiment where the user is presented with a menu of choices, which suggests this limitation is intended to apply in specific, non-interactive scenarios (’461 Patent, Claim 7).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by providing accused devices along with "instruction for customers to use the devices in an infringing manner" (Compl. ¶22, ¶24, ¶26). It also alleges contributory infringement on the basis that Defendant supplies "material parts of infringing systems" that are not staple articles of commerce and are incapable of substantial non-infringing use (Compl. ¶22, ¶24, ¶26).
- Willful Infringement: Plaintiff alleges that Defendant "has been willfully infringing...since at least as early as they became aware of the Patents-in-Suit" and has continued to infringe despite this knowledge (Compl. ¶28). The complaint does not specify when or how Defendant allegedly became aware of the patents.
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be one of definitional scope: can the term "characteristic known about the user," rooted in the patent's description of consumer marketing and personal preferences, be construed to cover the employer-defined access permissions and "user roles" implemented in the accused industrial vending system?
A second core issue will be the construction of the negative limitation present in the asserted claims: what technical steps satisfy the requirement that a "user cannot select a different type of item" after the "processor" makes a selection, and does the operation of the KeepStock CMI system meet this limitation?
A key evidentiary question will be one of proof for distinct patent claims: While the complaint provides a theory for the system claim of the '461 patent, it offers little specific detail on how the accused system performs the distinct, multi-step interactive method of the '239 patent, particularly the sequence of presenting a choice and acting on the user's response. Plaintiff will need to produce evidence mapping the accused system's functionality to these specific method steps.