DCT
6:22-cv-01238
Bassfield IP LLC v. Outfront Media Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bassfield IP LLC (Texas)
- Defendant: Outfront Media Inc. (Place of business in Texas)
- Plaintiff’s Counsel: Direction IP Law
- Case Identification: 6:22-cv-01238, W.D. Tex., 11/30/2022
- Venue Allegations: Venue is alleged to be proper based on the defendant maintaining a place of business in the district and committing alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s use of QR codes that incorporate a brand logo infringes a patent related to methods for producing composite documents containing both machine-readable and human-readable information.
- Technical Context: The technology involves overlaying a human-readable image, such as a logo, onto a machine-readable data pattern, like a QR code, in a manner that allows both to be perceived and the underlying data to remain decodable.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2002-10-16 | U.S. Patent No. 6,641,053 Priority Date (Filing Date) |
| 2003-11-04 | U.S. Patent No. 6,641,053 Issue Date |
| 2022-11-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,641,053 - "Foreground/Background Document Processing with Dataglyphs"
- Patent Identification: U.S. Patent No. 6,641,053, "Foreground/Background Document Processing with Dataglyphs," issued November 4, 2003 (’053 Patent).
The Invention Explained
- Problem Addressed: The patent addresses the limitations of prior art methods for storing machine-readable and human-readable information on a single document (Compl. ¶¶12-13; ’053 Patent, col. 2:30-38). Specifically, it notes that keeping these two types of information in separate, non-overlapping areas limits the density of machine-readable data that can be stored on a page (’053 Patent, col. 2:51-55).
- The Patented Solution: The invention describes a method for creating a composite document by generating a background image composed of "coded glyphtone cells" and overlaying it with a second, human-readable image (Compl. ¶11; ’053 Patent, Abstract). This technique is designed to allow the human-readable content to be viewed while preserving the decodability of the underlying machine-readable data, effectively integrating the two layers (’053 Patent, col. 3:15-24). The patent's figures illustrate this concept using "slash-like marks" as the data-carrying glyphs (’053 Patent, Fig. 1).
- Technical Importance: This method suggests a way to increase data storage capacity on a physical or digital document and to link human-readable content with verifiable, machine-readable data for purposes such as authentication or information retrieval (’053 Patent, col. 2:60-68).
Key Claims at a Glance
- The complaint asserts direct infringement of 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.
III. The Accused Instrumentality
Product Identification
- The "Accused Instrumentality" is identified as Defendant's method of producing a "composite machine-readable and human read-able document," specifically a "scannable QR code" (Compl. ¶¶15-16).
Functionality and Market Context
- The accused product is a QR code that incorporates the Defendant’s "OUTFRONT/" logo in the center of the code pattern (Compl. ¶16, ¶18). The complaint alleges that this QR code functions by having machine-readable data cells (the QR code pattern) and a human-readable graphical image (the logo) composited together (Compl. ¶18).
- The complaint provides an example of this QR code from Defendant’s San Antonio media kit, which directs users to "SCAN OR CLICK TO LEARN MORE," suggesting its use in advertising to link physical or digital media to online content (Compl. p. 5). The complaint includes a screenshot from Defendant's materials showing the accused QR code with the "OUTFRONT/" logo overlaid in the center (Compl. p. 5).
IV. Analysis of Infringement Allegations
Claim Chart Summary
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of producing a composite machine-readable and human-readable document comprising: | Defendant is alleged to practice a method of producing a composite document by creating a scannable QR code that includes both machine-readable data and a human-readable logo. | ¶15, ¶16 | col. 13:46-48 |
| 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; | The complaint alleges Defendant generates a QR image (background image) on a screen (substrate). It further alleges the QR code’s data cells, described as black and white patterns, meet the "coded glyphtone cells" and "halftone cells" limitations. | ¶17 | col. 13:49-54 |
| 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. | Defendant is alleged to composite the QR code (background image) with its logo (second image). The complaint asserts that after this compositing, the logo is viewable and the surrounding QR code cells remain decodable. | ¶18 | col. 13:55-58 |
Identified Points of Contention
- Scope Questions: A primary question may be whether the square modules of a standard QR code fall within the patent’s definition of "coded glyphtone cells" (’053 Patent, col. 13:50). The patent specification describes "glyphtone cells" in the context of a "Dataglyph" technology that uses "elongated slash-like marks" tilted at different angles to encode data, a visually and structurally distinct system from a QR code (’053 Patent, col. 5:16-24; Fig. 1).
- Technical Questions: The complaint alleges that the QR code remains decodable after the logo is applied (Compl. ¶18). A technical question is whether the mechanism for this decodability—standard QR error correction (e.g., Reed-Solomon codes) which treats the logo area as an erasure—is the same as the method described in the patent, which involves decoding "adjacent visible halftone cells" (’053 Patent, col. 13:56-57). The complaint's evidence for how QR codes work relies on citations to a general-interest technology website, not on a technical analysis of the accused product itself (Compl. ¶¶17, 18).
V. Key Claim Terms for Construction
The Term: "coded glyphtone cells"
- Context and Importance: This term defines the basic unit of the claimed machine-readable background image. The viability of the infringement claim may depend on whether the square black-and-white pixels of a QR code can be considered "coded glyphtone cells." Practitioners may focus on this term because the patent’s specification appears to tie the invention to a specific "Dataglyph" technology developed by the original assignee, Xerox.
- Intrinsic Evidence for a Broader Interpretation: The claim requires the cells to be based on "grayscale image data values" and comprise "one of at least two distinguishable patterns" (’053 Patent, col. 13:50-54), language that could arguably be stretched to cover the binary black and white squares of a QR code.
- Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly describes "glyphs" as "elongated slash-like marks" (’053 Patent, col. 5:16-18) and explains that "glyphtones" involve modulating the area of these glyphs to create a halftone effect (’053 Patent, col. 8:25-34). This detailed description and the accompanying figures (’053 Patent, Figs. 1, 2, 4) could support a narrower construction limited to that specific type of data mark, excluding QR code modules.
The Term: "compositing"
- Context and Importance: The definition of "compositing" is central to the second step of the claimed method. The dispute may turn on whether this term implies a simple overlay or a more sophisticated integration.
- Intrinsic Evidence for a Broader Interpretation: The plain meaning of "compositing" could encompass any process of combining two images, including placing one on top of the other, as is done with the accused QR codes.
- Intrinsic Evidence for a Narrower Interpretation: The patent describes a process where the foreground is "spatially registered with the background image" (’053 Patent, col. 14:59), and this registration is used to "precisely specify nominal positions for text and graphics" (’053 Patent, col. 7:60-8:2). This could be argued to require an active registration process that is more complex than simply placing a logo over a data pattern and relying on the pattern's inherent error correction.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege facts to support, or include counts for, indirect or contributory infringement. It alleges only direct infringement by the Defendant (Compl. ¶15).
- Willful Infringement: The complaint does not contain an allegation of willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "coded glyphtone cells", rooted in the patent’s disclosure of a "Dataglyph" technology using slanted line marks, be construed to encompass the standardized square modules of a modern QR code? The outcome may depend on whether the court finds the claim language is limited by the specific embodiments described and illustrated in the patent.
- A second central question will be one of functional mechanism: does the accused QR code’s reliance on a general-purpose error correction algorithm to compensate for the obscured data under the logo meet the claim requirement of "compositing... such that two or more adjacent visible halftone cells may be decoded"? The case may turn on whether this functional language is met by any process that achieves the end result, or if it requires the more specific registration and decoding process detailed in the patent's specification.