Bassfield IP LLC v. Success Foods Management Group LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Bassfield IP LLC (Texas)
  • Defendant: Success Foods Management Group, LLC d/b/a Torchy's Tacos (Texas)
  • Plaintiff’s Counsel: Direction IP Law
• Case Identification: 6:22-cv-00895, W.D. Tex., 08/30/2022
• Venue Allegations: Venue is alleged to be proper based on Defendant operating numerous places of business within the Western District of Texas where infringing acts have allegedly occurred.
• Core Dispute: Plaintiff alleges that Defendant’s use of QR codes that incorporate a central logo infringes a patent related to methods for producing composite machine-readable and human-readable documents.
• Technical Context: The technology relates to data encoding on physical media, specifically methods for combining machine-readable codes (such as QR codes) with human-readable images (such as logos) on a single document.
• Key Procedural History: The complaint does not reference any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.

Case Timeline

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

U.S. Patent No. 6,641,053 - Foreground/Background Document Processing with Dataglyphs, issued November 4, 2003

• The Invention Explained:
  • Problem Addressed: The patent describes a problem in prior art document processing where machine-readable information and human-readable information were typically printed in separate, non-overlapping areas on a document. This approach limits the amount of machine-readable data that can be stored on a page (’053 Patent, col. 2:51-55).
  • The Patented Solution: The invention proposes a method for creating a composite document by generating a "background image" of machine-readable code (termed "glyphtones" or "dataglyphs") and overlaying it with a "second image" of human-readable content. This allows both the code and the content to be discernible on the same area of the document, enabling more efficient use of space and new ways to link physical documents with digital information (’053 Patent, Abstract; col. 3:7-22). The patent's Figure 4 illustrates this concept by showing a graphical image of a cat composited with a background of machine-readable glyph codes (’053 Patent, Fig. 4).
  • Technical Importance: This approach provided a method to more tightly integrate digital data onto a physical medium, potentially to store more complete versions of an original document or to ensure the integrity of copies (’053 Patent, col. 2:60-67).
• Key Claims at a Glance:
  • The complaint asserts independent claim 1 (Compl. ¶15).
  • The essential elements of Claim 1 are:
    • A method of producing a composite machine-readable and human-readable document comprising:
    • generating a background image on a substrate, said background image comprising coded glyphtone cells based on grayscale image data values, each of said halftone cells comprising one of at least two distinguishable patterns;
    • compositing the background image with a second image such that two or more adjacent visible halftone cells may be decoded and the second image may be viewed.
  • The complaint does not explicitly reserve the right to assert other claims, but the prayer for relief is broad (Compl. p. 10, ¶a).

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is Defendant's "composite machine-readable and human read-able document," specifically a scannable QR code that includes the Torchy's Tacos logo in the center (Compl. ¶15-16). A representative image of the accused QR code is provided in the complaint, labeled "Training and User Guides" (Compl. p. 5).

Functionality and Market Context

• The complaint alleges that the accused QR code functions as a scannable link to a "Discount-Program.pdf" while simultaneously displaying the company's logo (Compl. ¶15-16). The QR code contains machine-readable "data cells" (black and white squares) that store information, and the logo serves as human-readable content (Compl. ¶16). The complaint alleges this composite document is used in materials such as "Training and User Guides" (Compl. p. 5).

IV. Analysis of Infringement Allegations

’053 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The patent repeatedly refers to "dataglyphs," "glyphtones," and "halftone cells," with figures illustrating elongated, slash-like marks (’053 Patent, Fig. 1, col. 5:11-32). The infringement theory rests on the premise that the square black-and-white modules of a standard QR code fall within the scope of these terms. This raises the question of whether a QR code module constitutes a "coded glyphtone cell based on grayscale image data values" as recited in the claim.
  • Technical Questions: Claim 1 requires "compositing the background image with a second image." The complaint's visual evidence shows a logo in the center of the QR code (Compl. p. 5). A technical question for the court will be whether the accused process generates a full QR code image and then overlays a logo, or if it generates the QR code around a reserved blank space where the logo is then placed. The latter process may not meet the "compositing" or "overlaid" language found in the patent (’053 Patent, Abstract).

V. Key Claim Terms for Construction

• The Term: "coded glyphtone cells based on grayscale image data values"

  • Context and Importance: The applicability of the patent to modern QR code technology hinges on the construction of this term. Whether the common black-and-white square modules of a QR code are equivalent to the "glyphtone cells" described in the patent will be a central issue in the dispute.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim requires cells based on "grayscale image data values," which a plaintiff may argue includes a binary black-and-white system as two points on a grayscale spectrum. The claim also refers to "halftone cells," a term that could be interpreted broadly to encompass any pattern of dots or elements used to represent an image, including QR code modules.
    • Evidence for a Narrower Interpretation: The specification consistently describes and illustrates "glyphs" as "elongated slash-like marks" tilted at different angles to encode data (’053 Patent, col. 5:11-20, Fig. 1). A defendant may argue that "glyphtone" is a term of art specific to this technology and does not read on the distinct square-module structure of a QR code.

• The Term: "compositing the background image with a second image"

  • Context and Importance: This term defines the core action of the claimed method. The infringement analysis will depend on whether the accused process of creating a logo-centric QR code meets the definition of "compositing."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language "compositing" could be construed to mean creating a single, final document from two distinct image sources, regardless of the precise technical method of combination.
    • Evidence for a Narrower Interpretation: The patent abstract uses the term "overlaid," and the specification describes registering a foreground image with a background (’053 Patent, Abstract; col. 8:58-64). This could support a narrower construction requiring a layering process, where the background image is generated first across an area and the second image is subsequently placed on top of it, obscuring parts of it.

VI. Other Allegations

• Indirect Infringement: The complaint does not plead any facts to support claims of indirect infringement.
• Willful Infringement: The complaint does not allege facts to support willful infringement, such as pre-suit knowledge of the patent.

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

This case appears to center on the application of a 2003-era patent on "dataglyphs" to modern QR code technology. The resolution will likely depend on the court's determination of two key questions:

• A core issue will be one of definitional scope: Can the term "coded glyphtone cells", which is described in the patent specification with specific reference to slash-like "dataglyphs," be construed broadly enough to encompass the standardized square modules of a QR code?
• A second key issue will be one of technical operation: Does the accused method of generating a QR code with a central logo meet the claim requirement of "compositing" a background image with a second image, or does the process of reserving a blank area for the logo constitute a different, non-infringing method?