DCT
5:24-cv-01274
Fortna Systems Inc v. Plus One Robotics Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fortna Systems, Inc. (Kentucky)
- Defendant: Plus One Robotics, Inc. (Delaware)
- Plaintiff’s Counsel: Pulman, Cappuccio & Pullen, LLP
- Case Identification: 5:24-cv-01274, W.D. Tex., 11/14/2024
- Venue Allegations: Venue is alleged to be proper in the Western District of Texas because the Defendant resides there, conducts business there, and its headquarters are located within the district.
- Core Dispute: Plaintiff alleges that Defendant’s dual-arm robotic parcel induction system infringes two patents related to automated conveyor systems that use multiple robot singulators to process a bulk flow of parcels.
- Technical Context: The technology addresses the need for high-speed automated parcel handling in logistics and fulfillment centers, where separating a random, bulk flow of packages into an orderly, single-file stream is a critical and often rate-limiting step.
- Key Procedural History: The complaint details a history of pre-suit correspondence, beginning with a notice letter regarding the ’256 Patent sent in October 2023, approximately seven months before Defendant announced the accused product. After Defendant denied infringement, Plaintiff sent a subsequent letter also asserting the newly-issued ’803 Patent. This history of notice may be used to support allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2020-06-22 | Priority Date for ’256 and ’803 Patents |
| 2021-05-20 | ’256 Patent Application Filed |
| 2022-09-09 | ’803 Patent Application Filed |
| 2023-09-12 | ’256 Patent Issued |
| 2023-10-10 | Defendant notified of ’256 Patent |
| 2024-05-07 | Accused Product "InductOne" announced |
| 2024-05-24 | Second notice of ’256 Patent infringement sent |
| 2024-06-20 | Defendant denied infringement of ’256 Patent |
| 2024-08-13 | ’803 Patent Issued |
| 2024-09-05 | Defendant notified of ’803 Patent infringement |
| 2024-11-14 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,753,256 - Conveyor System with Multiple Robot Singulators, issued September 12, 2023
The Invention Explained
- Problem Addressed: The patent identifies a deficiency in prior art sorting systems where a single robotic arm is used to singulate parcels. These single-robot systems face "cycle time limitations" and may lack the "necessary throughput required to efficiently process large parcel volumes" (’256 Patent, col. 1:50-59).
- The Patented Solution: The invention proposes a system using two robot singulators operating in parallel to transfer parcels from a "pick conveyor" to a "place conveyor" (’256 Patent, Abstract). A vision and control subsystem coordinates the robots, enabling one to engage a new parcel while the other is completing the transfer of a previous parcel, thereby reducing downtime and increasing overall throughput (’256 Patent, col. 5:25-40).
- Technical Importance: By using a coordinated, dual-robot architecture, the invention aims to directly overcome the processing-rate bottleneck of single-robot singulation systems in high-volume logistics environments (’256 Patent, col. 2:35-39).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 13, as well as dependent claim 18 (Compl. ¶23, 25, 27). It also states that Defendant infringes other claims of the ’256 Patent (Compl. ¶29).
- Independent Claim 1: The essential elements are (a) a first robot singulator, (b) a second robot singulator, (c) a picking area for bulk parcels, (d) a downstream place conveyor, (e) a vision and control subsystem with a camera and controller to direct the robots to "successively engage and transfer parcels," and (f) a "pick conveyor" that defines the picking area and can be "indexed" forward immediately following a parcel's removal.
- Independent Claim 13: This claim includes the core system elements of Claim 1 but replaces the "indexing pick conveyor" limitation with a structural requirement: a "framework for supporting the first robot singulator and the second robot singulator...in an inverted orientation over the picking area."
U.S. Patent No. 12,059,803 - Conveyor System with Multiple Robot Singulators and Buffering Conveyor, issued August 13, 2024
The Invention Explained
- Problem Addressed: The patent shares its background with the ’256 Patent, targeting the throughput limitations of single-robot parcel singulation systems (’803 Patent, col. 2:40-56).
- The Patented Solution: This invention adds a "buffering conveyor" to the dual-robot architecture. The system features two separate "place conveyors," each receiving parcels from one of the robots. The buffering conveyor is positioned between the first and second place conveyors to "regulat[e] a rate at which parcels offloaded by the first place conveyor are transferred to the second place conveyor" (’803 Patent, Abstract; Claim 1). This provides an additional layer of control for merging the two streams of singulated parcels (’803 Patent, col. 20:15-24).
- Technical Importance: The introduction of a buffering conveyor offers more sophisticated coordination between the parallel robotic systems, potentially improving the efficiency and reliability of merging two separately-created, singulated parcel streams into one.
Key Claims at a Glance
- The complaint asserts independent claims 1 and 9 (Compl. ¶37, 39). It also states that Defendant infringes other claims of the ’803 Patent (Compl. ¶41).
- Independent Claim 1: The key elements are (a) a first robot, (b) a second robot, (c) a picking area, (d) a first place conveyor for the first robot, (e) a second place conveyor for the second robot that is also configured to receive parcels from the first, (f) a "buffering conveyor" between the first and second place conveyors for "regulating a rate," and (g) a vision and control subsystem connected to the robots and the buffering conveyor.
- Independent Claim 9: This claim differs from Claim 1 primarily in its definition of the picking area and conveyors. It requires a "first picking area" and a "second picking area," with the first and second place conveyors explicitly receiving parcels from their respective picking areas.
III. The Accused Instrumentality
Product Identification
- Defendant’s “InductOne: A Dual-Arm Automated Parcel Induction Solution to Maximize Throughput” (the “Accused Product”) (Compl. ¶14).
Functionality and Market Context
- The complaint describes the Accused Product as a "dual-arm automated parcel induction solution designed to optimize parcel singulation and induction in high-volume fulfillment and distribution centers" (Compl. ¶14). Its key functionality is described as "choreographed dual-arm motion" (Compl. ¶15).
- The product is marketed as a high-performance system that "significantly outperforms single-arm solutions," achieving sustained rates of 2,200-2,300 picks per hour (Compl. ¶14-15). The parties are described as "direct competitors" in the automated material handling industry (Compl. ¶12).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint references pre-discovery claim charts in Exhibits 3 and 4, which were not provided with the complaint. The analysis below is based on the narrative allegations in the body of the complaint.
’256 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first robot singulator; [and] a second robot singulator | The Accused Product is a "dual-arm" system and has a first and second robot singulator. | ¶24.b | col. 4:40-44 |
| a picking area from which parcels of a bulk flow of parcels can be engaged and transferred | The Accused Product has a picking area for its robotic arms to engage and transfer parcels from a bulk flow. | ¶24.c | col. 4:37-40 |
| a place conveyor positioned downstream of the picking area and including a place area for receiving parcels | The Accused Product has a place conveyor downstream of the picking area to receive transferred parcels. | ¶24.d | col. 4:40-44 |
| a vision and control subsystem...to...selectively communicate instructions to the first robot singulator and the second robot singulator which cause [them] to successively engage and transfer parcels | The Accused Product has a vision and control subsystem that directs the two robotic arms to successively engage and transfer parcels. | ¶24.e | col. 4:44-49 |
| wherein the picking area is defined by a pick conveyor with a conveying surface that can be indexed and advanced forward...[and]...cause the pick conveyor to index a predetermined distance...immediately following removal of another parcel | The picking area of the Accused Product is defined by a pick conveyor that can be indexed, and its control system includes instructions to index the conveyor a predetermined distance immediately after a parcel is removed. | ¶24.f | col. 22:36-51 |
’803 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first place conveyor...configured to receive parcels transferred by the first robot singulator | The Accused Product has a first place conveyor to receive parcels from the first robotic arm. | ¶38.d | col. 25:50-53 |
| a second place conveyor...configured to receive parcels transferred by the second robot singulator and further configured to receive parcels from the first place conveyor | The Accused Product has a second place conveyor that receives parcels from the second arm and is also configured to receive parcels from the first place conveyor. | ¶38.e | col. 25:54-59 |
| a buffering conveyor positioned between the first place conveyor and the second place conveyor for regulating a rate at which parcels...are transferred | The Accused Product has a buffering conveyor between its first and second place conveyors that regulates the rate of parcel transfer between them. | ¶38.f | col. 26:10-15 |
| a vision and control subsystem operably connected to the first robot singulator, the second robot singulator, and the buffering conveyor | The Accused Product has a vision and control subsystem that is operably connected to both robot arms and the buffering conveyor. | ¶38.g | col. 26:16-20 |
Identified Points of Contention
- Scope Questions: For the ’803 patent, a central dispute may arise over the term "buffering conveyor for regulating a rate." The defense could argue that a conveyor in the accused product that merely transports parcels from one point to another does not perform the claimed function of "regulating a rate," even if it is positioned between two other conveyors. The interpretation of this functional language will be critical.
- Technical Questions: For the ’256 patent, a key technical question is whether the accused product's pick conveyor actually performs the claimed function of indexing "immediately following removal of another parcel." The complaint makes a conclusory allegation to this effect but provides no technical facts (Compl. ¶24.f). Evidence of the accused product's control logic and conveyor operation will be required to substantiate this claim.
V. Key Claim Terms for Construction
The Term: "successively engage and transfer" (’256 Patent, Claim 1)
- Context and Importance: This term defines the required temporal relationship between the actions of the two robots. The infringement finding may depend on whether the accused product’s "choreographed dual-arm motion" (Compl. ¶15) meets this definition. Practitioners may focus on this term because the degree of operational overlap between the robots is a core technical aspect of the invention's claimed efficiency improvement.
- Intrinsic Evidence for a Broader Interpretation: The patent states the robots "work in parallel to successively transfer parcels" (’256 Patent, col. 4:41-43), which could support an interpretation where "successively" refers to the overall process of handling one parcel after another, allowing for significant overlap in the robots' individual movements.
- Intrinsic Evidence for a Narrower Interpretation: The detailed description explains that one robot can be "engaged for transfer...while the other robot...is transferring another parcel...or returning from such transfer" (’256 Patent, col. 5:30-35). This could support a narrower reading that, for any single parcel, the "engage" and "transfer" steps are distinct and sequential, even if the robots' overall work cycles overlap.
The Term: "buffering conveyor...for regulating a rate" (’803 Patent, Claim 1)
- Context and Importance: This functional limitation is the central feature distinguishing the ’803 patent from the earlier ’256 patent. The entire infringement case for the ’803 patent likely rests on whether a component in the accused product performs this function.
- Intrinsic Evidence for a Broader Interpretation: A plaintiff may argue that any conveyor positioned between two merging streams that can be started, stopped, or have its speed adjusted is inherently "regulating a rate," giving the term its plain and ordinary meaning.
- Intrinsic Evidence for a Narrower Interpretation: The specification provides a specific example, stating the buffering conveyor can be "selectively indexed (i.e., to be moved a predetermined distance and/or to be driven for a predetermined period of time) to regulate the rate" (’803 Patent, col. 20:15-20). A defendant may argue this disclosure limits the claim to a conveyor that performs this specific, calculated indexing function, not just simple transport or speed control.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that by selling the Accused Product, Defendant knowingly and intentionally induces its customers (end users) to directly infringe the patents-in-suit (Compl. ¶30, 42).
- Willful Infringement: Willfulness is alleged for both patents based on pre-suit notice. For the ’256 Patent, the complaint cites letters from October 10, 2023, and May 24, 2024 (Compl. ¶31). For the ’803 Patent, it cites a letter from September 5, 2024, and Defendant's alleged lack of a substantive response thereto (Compl. ¶43-44).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of architectural equivalence: Does the accused "InductOne" system contain a component that functions as a "buffering conveyor for regulating a rate" as required by the ’803 patent, or is the corresponding part simply a transport conveyor? The outcome of the ’803 patent infringement claim will likely depend on the construction and application of this key term.
- A second key issue will be one of operational proof: The complaint alleges that the accused product's pick conveyor indexes in the specific manner claimed by the ’256 patent. A central evidentiary question will be whether discovery produces technical evidence of the accused product's control logic that confirms this specific, timed indexing function, a fact not currently supported in the complaint.
- Finally, the case will present a question of corporate conduct: Given the detailed timeline of pre-suit notice letters, the court will likely examine what actions, if any, the Defendant took to investigate potential infringement after being notified. Defendant's response and basis for its denial of infringement will be central to determining whether any infringement was willful.