DCT
6:06-cv-00363
RFID World Ltd v. Wal Mart Stores
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: RFID World Ltd. (Texas)
- Defendant: Wal-Mart Stores, Inc.; The Gillette Company; Michelin North America, Inc.; Home Depot U.S.A., Inc.; Target Corporation; & Pfizer Health Solutions (Delaware, New York, Minnesota)
- Plaintiff’s Counsel: Goldstein, Faucett & Prebeg, LLP; Law Office of T. John Ward, Jr., P.C.; Albritton Law Firm
- Case Identification: 6:06-cv-00363, E.D. Tex., 08/16/2006
- Venue Allegations: Venue is alleged to be proper under 28 U.S.C. § 1391(b) and 1400(b) based on the Defendants conducting business in the district.
- Core Dispute: Plaintiff alleges that inventory control systems utilized by the multiple Defendants, which employ Radio Frequency Identification (RFID) technology, infringe a patent directed to tracking and managing items in an inventory.
- Technical Context: The lawsuit concerns RFID-based inventory control, a technology used across retail, logistics, and supply chain management to automate the tracking of goods.
- Key Procedural History: The inventor, Ronald Bormaster, assigned his interest in the patent-in-suit to Plaintiff RFID World, Ltd. on August 14, 2006, two days prior to the filing of this complaint. The patent is a continuation of an application filed in 1999.
Case Timeline
| Date | Event |
|---|---|
| 1999-06-11 | ’563 Patent Priority Date |
| 2005-11-22 | ’563 Patent Issued |
| 2006-08-14 | ’563 Patent Assigned to Plaintiff |
| 2006-08-16 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,967,563 - "Inventory Control System"
The Invention Explained
- Problem Addressed: The patent identifies a need for a system that can provide "efficient multi-item tracking, loss or misplacement protection," noting that prior art systems were insufficient for tracking multiple items simultaneously and alerting a user when items are lost or misplaced (’563 Patent, col. 2:36-42).
- The Patented Solution: The invention is an inventory control system that affixes an "anti-collision, radio frequency identification" (ACRFID) tag to each item. An interrogator/reader generates a field that activates the tags, causing them to transmit a unique code. A central computer (Digital Processing Unit or DPU) maintains a list of all items and updates an item's status to "present" when its tag's signal is received or "absent" when it is not, thereby allowing a user to determine if any items are missing (’563 Patent, Abstract; col. 2:51-67). The "anti-collision" feature allows numerous tags to be read within the same field by having each tag delay its transmission if it senses another tag is already transmitting (’563 Patent, col. 5:7-10).
- Technical Importance: The described system enables automated, near-real-time inventory accounting without requiring manual scanning of individual items, addressing loss prevention in diverse environments from retail stores to hospital operating rooms (’563 Patent, col. 3:9-16, col. 4:30-34).
Key Claims at a Glance
- The complaint asserts infringement of "at least claim 1" of the ’563 Patent (Compl. ¶¶14-19).
- Independent Claim 1 of the ’563 Patent recites:
- A computer with a list comprising a unique item identifier, a unique item code, and an item status.
- An "anti-collision, field activated apparatus" (tag) affixed to each item, which includes a programmable memory, a transmitter, an antenna, and "anti-collision hardware and software."
- An interrogator/reader with a field generator and a receiver.
- A method wherein each tag "periodically transmits a signal... only when anti-collision hardware and software of each anti-collision, field activated apparatus determines that no other anti-collision, field activated apparatus is transmitting."
- A method wherein the status of a detected item is set to a "first state" (e.g., present) while the status of non-detected items is set to a "second state" (e.g., absent).
III. The Accused Instrumentality
Product Identification
The complaint accuses "an inventory control system utilizing the RFID technology" employed by each of the named Defendants (Wal-Mart, Gillette, Michelin, Home Depot, Target, and Pfizer) (Compl. ¶¶14-19).
Functionality and Market Context
The complaint does not describe the specific features, functions, or commercial products that constitute the accused instrumentalities. It alleges generally that the Defendants "use[]" or "sell[] products that include or use" such systems for inventory control purposes (Compl. ¶¶14-19). The complaint does not provide sufficient detail for a more specific analysis of the accused systems' functionality.
IV. Analysis of Infringement Allegations
The complaint makes identical, conclusory allegations against each Defendant, stating that by "utilizing such systems" they infringe "at least claim 1 of the ’563 patent" (Compl. ¶¶14-19). The complaint provides no specific facts, product details, or element-by-element mapping to support its infringement theory. The following chart is based on the general allegations made.
No probative visual evidence provided in complaint.
’563 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a computer including: a list implemented therein comprising: a unique item identifier for each item in an inventory; a unique item code; and an item status; | The complaint alleges Defendants' inventory control systems include a computer with a list containing item identifiers, codes, and status information. | ¶14 | col. 9:3-7 |
| an anti-collision, field activated apparatus affixed to each item in the inventory including a programmable memory storing its unique item code, a transmitter, anti-collision hardware and software and an antenna; | The complaint alleges Defendants' inventory control systems use RFID tags with the claimed components affixed to inventory items. | ¶14 | col. 9:8-12 |
| an interrogator/reader in communication with the computer and including: a field generator... and a receiver; | The complaint alleges Defendants' inventory control systems use an interrogator/reader to communicate with the tags and computer. | ¶14 | col. 9:13-20 |
| where each anti-collision, field activated apparatus... periodically transmits a signal... only when anti-collision hardware and software... determines that no other... apparatus is transmitting... | The complaint alleges Defendants' RFID systems utilize the claimed anti-collision transmission protocol. | ¶14 | col. 9:21-28 |
| and where the status of each item whose field activated apparatus has transmitted its signal... is set to a first state... while the status of all other items is set to a second state... | The complaint alleges Defendants' inventory control systems set a "first state" for detected items and a "second state" for non-detected items. | ¶14 | col. 9:28-34 |
- Identified Points of Contention:
- Scope Questions: A primary question will concern the scope of "anti-collision hardware and software" on the tag itself. The dispute may focus on whether this limitation reads on modern RFID systems that may use reader-driven or protocol-based anti-collision schemes (e.g., time-division multiplexing) rather than the tag-based "listen-before-talk" mechanism described in the patent (’563 Patent, col. 5:7-10).
- Technical Questions: The complaint provides no evidence regarding how the accused systems technically operate. A key factual question will be whether the accused systems actually implement the claimed two-state status logic ("present" vs. "absent") based on the periodic presence or absence of a tag's signal, as required by the final two limitations of Claim 1.
V. Key Claim Terms for Construction
The Term: "anti-collision hardware and software"
- Context and Importance: This term appears in Claim 1 and is central to the patent's purported novelty over systems that could only read one tag at a time. The definition is critical because the infringement analysis will depend on whether the specific anti-collision method used by the Defendants' commercial RFID systems falls within the scope of this term. Practitioners may focus on this term because different RFID standards implement anti-collision in varied ways, some of which may not align with the patent's specific disclosure.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is general and does not specify the mechanism by which the hardware and software operate, potentially allowing it to cover any on-tag components that achieve an anti-collision effect.
- Evidence for a Narrower Interpretation: The specification provides a specific example: "Anti-collision is generally performed by software and hardware of the tag which delays signal transmission whenever the hardware and software of the tag senses transmission by another tag" (’563 Patent, col. 5:7-10). This could be used to argue that the term is limited to a protocol where the tags themselves autonomously sense the medium and defer transmission.
The Term: "periodically transmits a signal... only when... [it] determines that no other... apparatus is transmitting"
- Context and Importance: This limitation defines the function of the "anti-collision hardware and software." Its construction will determine what type of communication protocol infringes. A dispute is likely to arise over whether this requires an autonomous, tag-centric determination, or if it could also cover a system where a central reader orchestrates collision-free communication by polling tags individually.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: An argument could be made that any system resulting in non-overlapping, periodic signals from tags meets the functional outcome of the claim, regardless of whether the tag or the reader is controlling the timing.
- Evidence for a Narrower Interpretation: The phrasing "determines that no other... apparatus is transmitting" suggests an active sensing or listening step performed by the tag itself, as described in the specification's preferred embodiment (’563 Patent, col. 5:7-10). This may support a narrower construction that excludes reader-managed protocols.
VI. Other Allegations
- Willful Infringement: The complaint does not explicitly allege willful infringement or provide any facts suggesting the Defendants had pre-suit knowledge of the ’563 patent. The prayer for relief includes a request for attorneys' fees but does not plead facts to support such an award (Compl. p. 5, ¶D).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: can the term "anti-collision hardware and software" located on the tag, which the patent describes as autonomously sensing and delaying transmission, be construed broadly enough to cover the potentially reader-managed, protocol-based anti-collision methods used in the Defendants' large-scale commercial RFID systems?
- A dispositive evidentiary question will be whether Plaintiff can demonstrate that the accused systems perform the specific functions required by the claims. Given the complaint's lack of technical detail, the case will depend on evidence uncovered in discovery showing that the accused systems actually implement the claimed two-state "present/absent" status logic based on the detection or non-detection of a tag's signal.