Transcend Shipping Systems LLC v. Premier Trailers LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Transcend Shipping Systems, LLC (Florida)
  • Defendant: Premier Trailers, LLC d/b/a Premier Trailer Leasing (Delaware)
  • Plaintiff’s Counsel: Garteiser Honea, PLLC
• Case Identification: 6:22-cv-00186, E.D. Tex., 02/23/2022
• Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant has a principal corporate office in Plano, Texas, and regularly conducts business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s leased commercial trailers equipped with tracking and monitoring systems infringe five patents related to providing real-time shipment information.
• Technical Context: The technology at issue falls within the logistics and supply chain management sector, where real-time asset tracking and condition monitoring are critical for operational efficiency and cargo security.
• Key Procedural History: The complaint asserts that the patents-in-suit are "pioneering" and have been cited as prior art in over 130 subsequent patent applications by major technology and logistics companies. It also notes that U.S. Patent No. 7,253,731 expired on August 7, 2019, due to nonpayment of maintenance fees, limiting any potential remedy for that patent to damages for past infringement.

Case Timeline

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

U.S. Patent No. 10,181,109 - "Apparatus and Method for Providing Shipment Information"

The Invention Explained

• Problem Addressed: The patent’s background section notes that senders and receivers of shipped goods have had “only very limited means available to them for obtaining shipment information regarding shipments in transit.” (’109 Patent, col. 1:50-54). This lack of real-time visibility creates inefficiency and uncertainty in logistics.
• The Patented Solution: The invention is an apparatus integrated with a “shipment conveyance device” (e.g., a pallet or container) that includes a global positioning device, a processor, a receiver, and a transmitter (’109 Patent, Abstract). The apparatus is configured to generate and transmit a message containing the device’s location, either in response to an “occurrence of an event” or in response to a “request for information” that is automatically received by the apparatus’s receiver (’109 Patent, col. 24:12-21). This provides automated, on-demand, or event-triggered location reporting for shipments.
• Technical Importance: The technology provides a framework for automated, real-time asset tracking, a foundational capability for modern supply chain management and logistics operations (Compl. ¶¶ 12, 23).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 8, 10, and 14 (Compl. ¶46).
• Independent Claim 1 of the ’109 Patent includes these essential elements:
  • An apparatus comprising a shipment conveyance device (defined as a shipping container, pallet, or piece of luggage)
  • a receiver
  • a global positioning device located on the conveyance device to determine its position
  • a processor that generates a message in response to an event or in response to a request for information that is “automatically received by the receiver”
  • a transmitter located on the conveyance device that transmits the message to a communication device associated with an authorized party

U.S. Patent No. 9,847,029 - "Apparatus and Method for Providing Shipment Information"

The Invention Explained

• Problem Addressed: The problem is identical to that described for the ’109 Patent: the lack of a system to provide interested parties with real-time information about a shipment or delivery in progress (’029 Patent, col. 1:40-45).
• The Patented Solution: The ’029 Patent, which is part of the same family as the ’109 Patent, describes a similar apparatus for a shipment conveyance device. It includes a memory device, a global positioning device, a processor, and a transmitter (’029 Patent, Abstract). The processor generates a message with location and status information in response to an event or request, which is then transmitted to a communication device (’029 Patent, col. 4:5-14).
• Technical Importance: As with the related patents, this technology enables automated, event-driven monitoring and reporting for shipped goods, enhancing logistics visibility and control (Compl. ¶¶ 12, 31).

Key Claims at a Glance

• The complaint asserts dependent claims 2, 12, 15, and 19 (Compl. ¶63). These claims depend from independent claim 1.
• Independent Claim 1 of the ’029 Patent includes these essential elements:
  • An apparatus comprising a shipment conveyance device
  • a memory device located on the conveyance device
  • a global positioning device located on the conveyance device
  • a processing device that processes information and generates a message containing location and event/status information
  • a transmitter located on the conveyance device
• Asserted claim 2 adds the limitation that the "shipment conveyance device is a smart container" (’029 Patent, col. 24:26-27).

U.S. Patent No. 7,482,920 - "Apparatus and Method for Providing Shipment Information"

• Technology Synopsis: The patent describes an apparatus for a shipment conveyance device (e.g., container, pallet) that includes a memory device, a GPS device, a processing device, and a transmitter to provide shipment information. The processor generates a message with location and status information (e.g., temperature, impact) in response to an event or request (Compl. ¶15).
• Asserted Claims: Independent claim 1 and dependent claims 5, 9, 11, and 16 (Compl. ¶80).
• Accused Features: The complaint accuses Premier’s trailer monitoring and control systems, which allegedly incorporate the claimed combination of memory, GPS, processing, and transmission capabilities to report on shipment status (Compl. ¶¶ 83-87).

U.S. Patent No. 10,796,268 - "Apparatus and Method for Providing Shipment Information"

• Technology Synopsis: This patent covers an apparatus for a shipment conveyance device that includes a GPS, a processor that generates a message in response to an event or an automatically received request, and a transmitter. The message contains information regarding a shipment associated with the device (Compl. ¶18).
• Asserted Claims: Independent claim 1 and dependent claims 8, 10, and 12 (Compl. ¶99).
• Accused Features: The complaint alleges that Premier’s trailers, equipped with monitoring systems that automatically detect and report events like route or temperature deviations, infringe the claimed invention (Compl. ¶¶ 102-105).

U.S. Patent No. 7,253,731 - "Apparatus and Method for Providing Shipment Information"

• Technology Synopsis: The patent describes an apparatus associated with a shipment that includes a memory device, a GPS, a processing device, and a transmitter. The processor generates messages containing location and status information (e.g., temperature, impact) for transmission to a communication device (Compl. ¶14).
• Asserted Claims: Independent claim 1 and dependent claims 5, 9, 11, and 16 (Compl. ¶116).
• Accused Features: Premier’s trailer monitoring systems are accused of infringing by providing the claimed combination of components to store shipment data and report on location and environmental conditions (Compl. ¶¶ 119-123).

III. The Accused Instrumentality

Product Identification

The Accused Instrumentalities are Defendant Premier’s leased commercial trailers, including dry vans, refrigerated trailers, lift gate trailers, flatbed trailers, and chassis trailers, that incorporate monitoring and control systems (Compl. ¶42, 49).

Functionality and Market Context

The complaint alleges these trailers are equipped with advanced technology to monitor and manage fleets. A screenshot in the complaint describes Premier’s “FleetLocate®” system as featuring “real-time GPS tracking plus geofencing with continuous updates and battery monitoring” (Compl. ¶49, Fig. 2). For refrigerated trailers ("reefers"), the system allegedly provides “real-time temperature monitoring and two-way remote control,” allowing users to receive alerts for low fuel or temperature deviations and remotely adjust settings (Compl. Fig. 3). The complaint also provides a screenshot of a "Trailer Tracking Solutions" webpage showing a map-based dashboard for geolocating trailers (Compl. ¶50, Fig. 8). Plaintiff alleges these systems provide Defendant and its customers with the ability to remotely monitor the location and condition of shipped goods (Compl. ¶51).

IV. Analysis of Infringement Allegations

’109 Patent Infringement Allegations

’029 Patent Infringement Allegations

Identified Points of Contention

• Scope Questions: A central question may be whether Defendant's entire semi-trailers fall within the scope of the term "shipment conveyance device", which the patents define with examples such as a "shipping container, a pallet, or a piece of luggage" (’109 Patent, col. 24:3-4). Similarly, for the ’029 Patent, the analysis may focus on whether a trailer equipped with a tracking system meets the definition of a "smart container" as required by asserted claim 2.
• Technical Questions: For the ’109 Patent, a key issue may be the interpretation of the phrase "request for information is automatically received by the receiver." The complaint alleges infringement based on the system sending alerts in response to detected events (Compl. ¶51). The court may need to determine whether an internal, event-based trigger constitutes an "automatically received request" or if the claim requires an external query received from another device.

V. Key Claim Terms for Construction

The Term: "shipment conveyance device"

• Context and Importance: This term appears in the preambles of the asserted independent claims of all five patents-in-suit. The viability of the infringement case depends on this term being construed to cover Defendant's accused semi-trailers. Practitioners may focus on this term because the specific exemplars in the claim language ("shipping container, a pallet, or a piece of luggage") are items typically carried by a vehicle, rather than being the vehicle itself.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification provides a broad definition, stating the term refers to "any shipment conveyance devices, pallets, containers, ... totes, boxes, envelopes, bags, canvas bags, luggage, baggage, and/or any shipment conveyance structures or apparatuses, of any size, kind, or type" (’109 Patent, col. 8:46-53). Plaintiff may argue this expansive, illustrative list is intended to be read broadly.
  • Evidence for a Narrower Interpretation: Defendant may argue that the specific, repeated examples in the claims—containers, pallets, and luggage—limit the scope of the more general term "device." The figures in the patents also depict discrete, portable containers and pallets rather than vehicles (’109 Patent, Figs. 3-4).

The Term: "smart container"

• Context and Importance: This term is a specific limitation in asserted claim 2 of the ’029 Patent. The infringement analysis for this claim will turn on whether Defendant's trailers, which are equipped with tracking and monitoring systems, meet the definition of a "smart container."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent does not provide an explicit definition for "smart container." Plaintiff may argue that the ordinary meaning of the term at the time of the invention would encompass any container imbued with electronic intelligence for tracking and monitoring, which is consistent with the functions described in the patent and allegedly performed by the accused products.
  • Evidence for a Narrower Interpretation: The complaint does not provide sufficient detail for analysis of intrinsic evidence supporting a narrower interpretation of this specific term. A defendant may argue that the term implies a level of integrated intelligence or functionality beyond what is present in the accused systems.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement, stating that Premier encourages its customers to use the infringing monitoring systems and provides technical support for their use (Compl. ¶¶ 47-48, 64-65).
• Willful Infringement: Willfulness is alleged based on Defendant’s knowledge of the patents "at least as early as the date it received service of this Original Complaint" (Compl. ¶¶ 44, 61). The complaint further alleges that Premier has a "policy or practice of not reviewing the patents of others" and has been "willfully blind to the patent rights of Plaintiff" (Compl. ¶¶ 58, 75).

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

• A core issue will be one of definitional scope: can the term "shipment conveyance device," which is exemplified in the patents with items like pallets, luggage, and portable containers, be construed to read on entire commercial semi-trailers? The outcome of this claim construction dispute may be dispositive for the case.
• A second central question will be one of technical mechanism: what evidence will be presented to establish that the accused systems operate by responding to a "request for information [that] is automatically received by the receiver," as required by claims in patents like the ’109 Patent, as opposed to solely reacting to internally detected, pre-programmed events like a geofence breach or temperature change?
• A third key question, specific to the ’029 Patent, will be whether a commercial trailer equipped with a third-party GPS and sensor system constitutes a "smart container" under the meaning of the claims.