Zito LLC v. Turtle Integrated Supply Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Zito, LLC (Maryland)
  • Defendant: Turtle Integrated Supply, Inc. (New Jersey/Texas)
  • Plaintiff’s Counsel: DNL Zito
• Case Identification: 4:24-cv-04583, S.D. Tex., 11/21/2024
• Venue Allegations: Defendant is alleged to maintain several regular and established places of business in the Southern District of Texas where it sells, supplies, and services the accused products.
• Core Dispute: Plaintiff alleges that Defendant’s industrial vending machines and automated supply solutions infringe three patents related to user-specific dispensing systems.
• Technical Context: The technology involves automated vending systems that identify a user and dispense an item tailored to that user's specific characteristics, such as their role within an organization.
• Key Procedural History: The complaint does not mention any prior litigation, IPR proceedings, or licensing history related to the patents-in-suit.

Case Timeline

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

U.S. Patent No. 10,867,461 - "User-Specific Dispensing System" (Issued Dec. 15, 2020)

The Invention Explained

• Problem Addressed: The patent identifies a need for a system that moves beyond coupons or random rewards to provide targeted, on-site dispensing of physical items. Prior art systems were noted as not being sufficiently customized to a user's individual characteristics or preferences (’461 Patent, col. 2:3-16).
• The Patented Solution: The invention is a system that uses a reader to obtain user-specific information (e.g., from an RFID tag) and employs a processor to select and dispense an appropriate item from a storage unit. The system is designed to automatically select an item based on characteristics like the user's age, gender, or role, removing the need for a separate redemption step (’461 Patent, col. 4:43-58, Fig. 1).
• Technical Importance: The technology aimed to make promotional marketing more effective by automating the process of getting targeted physical samples directly into the hands of specific consumers at a given location (’461 Patent, col. 1:25-36).

Key Claims at a Glance

• The complaint asserts claims 1-55, with independent claim 1 being exemplary (Compl. ¶17).
• Essential Elements of Independent Claim 1:
  • An input device for accepting user-specific information.
  • At least one storage device.
  • At least one dispensing device.
  • A processor that interprets the user-specific information to select an item type 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.
  • The dispensation is automatic and the user cannot select a different type of item after the processor makes its selection.
• The complaint also asserts method claim 37 and various dependent claims (Compl. ¶31).

U.S. Patent No. 11,127,239 - "User-Specific Dispensing System" (Issued Sep. 21, 2021)

The Invention Explained

• Problem Addressed: Similar to its parent, the ’461 patent, this patent addresses the challenge of providing automated, targeted, on-site sampling to consumers in an increasingly competitive retail market (’239 Patent, col. 1:24-34).
• The Patented Solution: This patent claims a method for user-specific dispensing. The method involves identifying a user, selecting an appropriate type of item based on their characteristics, and then presenting the user with at least one choice of items within that appropriate type. The user then selects a specific item for dispensation, but is restricted from choosing a different type of item (’239 Patent, claim 1). This differs from the fully automatic selection described in the ’461 patent by introducing a user selection step from a pre-filtered menu.
• Technical Importance: The method provides a framework for an interactive yet controlled dispensing experience, guiding a user toward a specific category of products while still offering limited choice.

Key Claims at a Glance

• The complaint asserts claims 1-17, with independent claim 1 being exemplary (Compl. ¶18).
• Essential Elements of Independent Claim 1:
  • Identifying a user and associating user-specific information (user location, biological profile, or user role).
  • Selecting at least one type of item appropriate for the user.
  • Presenting the user with at least one choice of the at least one appropriate type of item.
  • Selecting a specific item based on the user's response.
  • Automatically dispensing the specific item selected.
  • The user cannot select a different type of item for that dispensation after being presented with the choice.
• The complaint reserves the right to assert all claims 1-17 (Compl. ¶18).

Multi-Patent Capsule

U.S. Patent No. 11,710,364 - "User-Specific Dispensing System" (Issued Jul. 25, 2023)

• Technology Synopsis: This patent describes a system to activate a user-appropriate tool or machine. It uses a first input device to identify a user, associates user-specific information (such as user role), and uses a processor to select and activate an item via a release mechanism. As with the other patents, the user cannot select a different item for release after the processor makes its selection (’364 Patent, claim 1).
• Asserted Claims: 1-16 (Compl. ¶19).
• Accused Features: The complaint alleges that Defendant’s vending machines and automated tool cribs, which control access to tools and supplies based on user identity, constitute the claimed system (Compl. ¶¶ 20, 25).

III. The Accused Instrumentality

• Product Identification: The accused instrumentalities are Defendant’s "Turtle Industrial Vending Machines," "MRO Vending Machines," and associated "automated tool cribs and vending machines equipped with cloud technology" (Compl. ¶¶ 3, 9).
• Functionality and Market Context: The complaint alleges these products are used for industrial supply and inventory control, allowing businesses to store and organize Maintenance, Repair, and Operations (MRO) products closer to where they are used (Compl. ¶29). The system allegedly uses "Onboard vending software" that allows managers to "set item quantity limits and tool access restrictions," thereby controlling how supplies are utilized based on user identity (Compl. ¶29). A marketing image provided in the complaint describes these as "Automated Storerooms, Vending Solutions" which include helix-based, drawer-based, and weight-based systems with "Software, Web & Mobile Access" (Compl. p. 3).

IV. Analysis of Infringement Allegations

’461 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question will be whether a manager setting "tool access restrictions" in software for an employee qualifies as the claimed "processor" interpreting a "user role" to select an item. The defense may argue that "user role" as described in the patent (e.g., related to consumer demographics or preferences) is distinct from an industrial access permission level.
  • Technical Questions: The complaint alleges "automatic dispensation," yet the accused product's functionality appears to be based on pre-set permissions. It raises the question of whether the processor is dynamically selecting an item in real-time based on a user profile, as taught in the patent, or merely enforcing a static access control list.

The complaint does not provide sufficient detail for analysis of the infringement allegations against the '239 Patent in a claim chart format. The narrative theory is that by providing the accused systems and instructing customers on their use, Defendant's customers practice the patented method of selecting and dispensing items based on user-specific information (Compl. ¶¶ 23-24). A key point of contention for the '239 Patent will be reconciling its requirement of "presenting the user with at least one choice" with the '461 Patent's limitation that dispensation is "automatic" and the user "cannot select" a different item type.

V. Key Claim Terms for Construction

Term: "user role within a group"

• Context and Importance: This term is a critical "user characteristic" recited in the independent claims of all three patents-in-suit. The complaint's infringement theory hinges on equating an employee's access permissions in an industrial setting with a "user role." The construction of this term will likely determine whether the patents, which describe applications in consumer marketing and amusement, can read on the accused industrial tool cribs.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself is general. The specification lists several disparate examples, including a "member of a health club" or "school students," suggesting the term is not limited to a single context (’461 Patent, col. 6:58-65; col. 7:1-3).
  • Evidence for a Narrower Interpretation: The detailed description focuses heavily on consumer marketing (e.g., dispensing after-shave samples to males under 45) and amusement contexts (’461 Patent, col. 6:33-46). A defendant may argue these embodiments limit the term to consumer or entertainment profiles, not industrial job functions.

Term: "automatic dispensation...wherein the user cannot select a different type of item"

• Context and Importance: This limitation from the '461 patent defines the degree of system control versus user choice. Its interpretation is crucial for distinguishing the invention from a simple vending machine and for assessing infringement by the accused system, where a user might select from a list of pre-approved items.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Claim 1 states the processor selects the specific item and automatically dispenses it, suggesting a fully automated process with no user selection after identification (’461 Patent, col. 12:56-61).
  • Evidence for a Narrower Interpretation: The specification mentions embodiments where a user is prompted and makes a selection from a menu, which could suggest the "automatic" nature refers to the inability to bypass the system's category filtering, not the absence of any user choice whatsoever (’461 Patent, col. 6:49-57). This interpretation, however, appears more aligned with the claims of the '239 patent.

VI. Other Allegations

• Indirect Infringement: The complaint alleges active inducement by providing accused devices along with "instruction for customers to use the devices in an infringing manner" (Compl. ¶¶ 22, 24, 26). Contributory infringement is alleged on the basis that Defendant supplies "material parts of infringing systems" that are not staple articles of commerce and are known to be especially made for an infringing use (Compl. ¶¶ 22, 24, 26).
• Willful Infringement: Willfulness is alleged based on Defendant's purported awareness of the patents-in-suit and its refusal "to cease selling products or to engage in further attempts to reach a business resolution" (Compl. ¶28). The complaint asserts this constitutes intentional and knowing infringement.

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

1. A central issue will be one of definitional scope: Can the term "user role," which is described in the patents primarily in consumer and demographic contexts, be construed broadly enough to encompass the manager-defined tool access permissions of an employee in the accused industrial vending systems?
2. A second key question will be one of operational consistency: The complaint accuses the same product line of infringing both the ’461 patent, which claims a fully "automatic dispensation" where the user "cannot select" a different item type, and the ’239 patent, which claims a method that requires "presenting the user with at least one choice." The court will need to determine if the accused system’s functionality can simultaneously meet these seemingly contradictory claim limitations.
3. An evidentiary question will be one of system intelligence: Does the accused product's processor perform the claimed function of dynamically interpreting user data to "select a type of item," or does it merely enforce a static, pre-programmed access control list, potentially creating a mismatch with the patented invention's logic?