DCT
6:19-cv-00628
Intellectual Tech LLC v. Zebra Tech Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Intellectual Tech LLC (Texas)
- Defendant: Zebra Technologies Corporation (Illinois)
- Plaintiff’s Counsel: Cole Schotz, P.C.
- Case Identification: 6:19-cv-00628, W.D. Tex., 10/22/2019
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the district, specifically an office in Austin, Texas, which Defendant acquired and operates. The complaint provides photographic evidence of a building with Zebra signage and a "Zebra Employee Entrance."
- Core Dispute: Plaintiff alleges that Defendant’s broad range of RFID readers, handheld computers, wearable devices, tablets, and printers infringes a patent related to flexible and multi-protocol RFID base units for use in automated applications.
- Technical Context: The lawsuit concerns Radio Frequency Identification (RFID) technology, which is widely used in logistics, inventory management, security, and asset tracking to automate data capture and device control.
- Key Procedural History: The asserted patent, U.S. Patent No. 7,233,247, underwent ex parte reexamination, resulting in a certificate issued on June 7, 2019. The original claims (1-15) were cancelled, and new claims (16-163) were added. The claims asserted in this litigation were added during this reexamination, a fact that may be significant for claim construction and validity analyses.
Case Timeline
| Date | Event |
|---|---|
| 2005-01-20 | ’247 Patent Priority Date |
| 2007-06-19 | ’247 Patent Issue Date |
| 2018-07-01 | Zebra completes acquisition of Xplore Technologies |
| 2019-06-07 | ’247 Patent Reexamination Certificate Issued |
| 2019-10-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,233,247 - Method and System for Employing RFID Tags in Automated Applications, Issued June 19, 2007
The Invention Explained
- Problem Addressed: The patent describes a landscape where conventional RFID base units were often designed for specific types of RFID tags and tailored for narrow applications, lacking the flexibility to be easily monitored or adapted to diverse operational needs (’247 Patent, col. 3:13-23).
- The Patented Solution: The invention is a unified and versatile RFID base unit designed to overcome these limitations. It can communicate with multiple, different types of commercially available RFID tags and interface with a wide array of external devices and computer networks using various communication standards (’247 Patent, Abstract; col. 4:21-38). This allows the base unit to be dynamically configured and monitored, making it particularly useful for controlling automated devices in complex safety and security applications (’247 Patent, col. 4:24-28, Fig. 3).
- Technical Importance: The technology provides a single, adaptable hardware platform for RFID-based automation, potentially reducing system complexity and cost in environments that would otherwise require multiple, disparate systems for different RFID protocols or applications (’247 Patent, col. 4:11-15).
Key Claims at a Glance
- The complaint asserts independent claims 138, 144, 149, and 154 (Compl. ¶15). The following is a breakdown of representative independent claim 144:
- An apparatus comprising:
- a RFID base unit incorporating a processor configured to employ two or more connection standards and output signals to engage or disengage a device;
- the RFID base unit further includes an antenna and RF circuitry, an operating system, an internal memory, a rechargeable battery, and a shockproof housing;
- the RFID base unit is configured to transmit digital signals to an "alternative security device" through a first communications channel;
- the RFID base unit is configured to transmit signals through two or more communication channels other than the first; and
- the RFID base unit is configured to store authorization information in its internal memory.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The complaint identifies six categories of accused products: (1) Fixed RFID Readers, (2) RFID Handheld Readers, (3) Handheld Computers, (4) Wearable Computers, (5) Tablets, and (6) Printers (Compl. ¶10). Representative examples include the FX9600 Fixed Reader, MC3330R Handheld Reader, MC9300 Handheld Computer, WT6000 Wearable Computer, L10 Android Tablet, and ZQ300/iMZ Series Printers (Compl. ¶¶18, 27, 37, 47, 57, 67).
Functionality and Market Context
The accused products are described as processor-based devices designed for enterprise, industrial, and logistics environments (Compl. ¶¶19, 23, 28, 33). They incorporate operating systems (e.g., Linux, Android), internal memory, and extensive connectivity options, including Wi-Fi, Bluetooth, Ethernet, and NFC (Compl. ¶¶19, 21-22, 28, 30-31). The complaint highlights their ruggedized or "shockproof" construction, suiting them for harsh conditions (Compl. ¶23). A representative product photo shows the MC3330R Integrated UHF RFID Handheld Reader, a mobile device combining a scanner, computer, and display in a single unit (Compl. p. 12). The products are positioned as tools for enhancing efficiency and accuracy in operations like inventory, picking, and shipping (Compl. ¶20).
IV. Analysis of Infringement Allegations
’247 Patent Infringement Allegations (Representative Claim 144)
| Claim Element (from Independent Claim 144) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a RFID base unit incorporating a processor wherein the RFID base unit is at least configured to employ two or more connection standards... | The accused products contain a microprocessor (e.g., Texas Instruments AM3505, Qualcomm Snapdragon) and are configured to connect to other devices using multiple standards like Wi-Fi and Bluetooth. | ¶¶19, 28, 38 | US 7,233,247 C1, col. 11:45-50 |
| the RFID base unit further comprising: an antenna and RF circuitry; an operating system; an internal memory; and a rechargeable battery...; and a shockproof housing | The products include RF circuitry for RFID/wireless communication, an operating system (e.g., Linux, Android), internal memory (e.g., Flash, DRAM), a rechargeable battery, and a rugged or durable housing described as "shockproof." | ¶¶20-23, 29-33 | US 7,233,247 C1, col. 11:51-57 |
| wherein the RFID base unit is configured to transmit digital signals to an alternative security device through a first communications channel | The products are alleged to be configured to transmit signals to an "alternative security device" via communications channels such as Wi-Fi and/or Bluetooth, and can communicate with servers and other devices. | ¶24 | US 7,233,247 C1, col. 11:58-61 |
| wherein the RFID base unit is configured to transmit signals through two or more communication channels other than the first communications channel | The products can communicate via multiple channels, such as Wi-Fi and Bluetooth simultaneously or in addition to other wired/wireless connections. A provided spec sheet for the FX9600 lists Ethernet, USB, and optional Wi-Fi/Bluetooth (Compl. p. 9). | ¶25 | US 7,233,247 C1, col. 11:62-65 |
| wherein the RFID base unit is configured to store information related to authorization in the internal memory | The products' internal memory is alleged to be capable of storing authorization information such as logins, registration codes, authentication codes, or passwords. | ¶26 | US 7,233,247 C1, col. 12:1-3 |
Identified Points of Contention
- Scope Questions: A central question may be whether the term "RFID base unit," as used in the patent, can be construed to read on the diverse array of accused products, which include multi-function mobile computers, tablets, and printers. The patent's figures depict the "base unit" as a discrete component in a larger system, which may raise questions about its applicability to integrated, all-in-one devices like the accused Handheld Computers (Compl. p. 17).
- Technical Questions: The complaint alleges the products meet the "alternative security device" limitation by being able to communicate with servers or other networked devices (Compl. ¶24). A potential point of dispute is whether a general-purpose server or another networked product constitutes an "alternative security device" in the context of the patent, which provides more specific examples like biometric scanners (’247 Patent, col. 6:3-9). The evidentiary basis for this functional allegation may be scrutinized.
V. Key Claim Terms for Construction
The Term: "RFID base unit"
- Context and Importance: The definition of this term is critical, as it determines whether the patent's scope can encompass the wide variety of accused instrumentalities, from fixed readers to mobile printers. Practitioners may focus on this term because the accused products' primary functions (e.g., computing, printing) extend beyond that of a simple RFID reader.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The abstract describes a "unified" base unit that can "communicate with any number of devices" and be tailored for "virtually any situation," suggesting a broad and flexible role (’247 Patent, Abstract). The specification also notes that the base unit can be coupled to a variety of other devices, including automated devices and I/O modules, implying significant adaptability (US 7,233,247 C1, col. 2:19-25).
- Evidence for a Narrower Interpretation: The patent’s Figure 3 depicts the "RFID BASE UNIT (304)" as a distinct block, separate from "AUTOMATED DEVICES (330)" and an "I/O DEVICE (338)." This could support an interpretation that the "base unit" is a specific intermediary controller, rather than an end-use device like a mobile computer or printer.
The Term: "alternative security device"
- Context and Importance: This term, appearing in claims like 144, is a specific functional requirement. Its construction will determine what type of device the accused products must be shown to communicate with to infringe. The complaint's theory appears to rely on communication with general network devices (Compl. ¶24).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly limit the term. A party could argue that any device that contributes to a security protocol (e.g., a server holding an access control list) qualifies.
- Evidence for a Narrower Interpretation: The specification provides specific examples of what this could be: "a fingerprint reader, an iris scanner, a retinal scanner, a facial recognition scanner, and so forth" (’247 Patent, col. 6:5-9). This list of biometric scanners could be used to argue that the term is limited to devices that perform a secondary, user-specific authentication function, not general-purpose network components.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by asserting that Zebra provides customers with instructions on how to use the accused products in an infringing manner (Compl. ¶79). It also pleads contributory infringement, alleging the products would be combined with other components and have no substantial non-infringing use (Compl. ¶80).
- Willful Infringement: Willfulness is alleged based on notice of infringement from "at least the filing of this Complaint" (Compl. ¶78). The complaint does not assert any pre-suit knowledge on the part of the Defendant.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "RFID base unit," as defined and described in the patent and its prosecution history, be construed to cover the broad and functionally diverse range of accused instrumentalities, including handheld computers, tablets, and mobile printers?
- A key evidentiary question will be one of functional satisfaction: does communication with general-purpose network components like servers, as alleged in the complaint, meet the "alternative security device" limitation, or does the patent's context and specific examples require communication with a more specialized authentication device like a biometric scanner?
- The impact of the reexamination history will be central. The asserted claims were added years after the original patent issued, introducing new limitations (e.g., "shockproof housing", "rechargeable battery"). How this history influences the construction of both new and original claim terms will be a critical aspect of the litigation.