ScanComm LLC v. Microsoft Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: ScanComm LLC (Delaware)
  • Defendant: Microsoft Corporation (Washington)
  • Plaintiff’s Counsel: KENT & RISLEY LLC
• Case Identification: 6:23-cv-00634, W.D. Tex., 08/28/2023
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business in the district and has committed alleged acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s Surface Duo 2 device, when running the Skype and/or LinkedIn applications, infringes a patent related to systems for initiating secure, private communications by scanning a visual code.
• Technical Context: The technology concerns the use of scannable codes, such as QR codes, on mobile devices to create communication links between users without requiring the initial exchange of personal contact information like phone numbers or email addresses.
• Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of the patent and detailed infringement allegations via a letter and claim charts dated August 22, 2023, prior to filing the lawsuit. This allegation may form the basis for a claim of willful infringement.

Case Timeline

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

U.S. Patent No. 11,003,878 - “System for Communication from a User to the Publisher of a Scannable Label”

• Patent Identification: U.S. Patent No. 11,003,878, “System for Communication from a User to the Publisher of a Scannable Label,” issued May 11, 2021.

The Invention Explained

• Problem Addressed: The patent describes a need for a method that allows individuals or businesses to engage in private digital communications that are initiated by a physical-world interaction (scanning a label), without the parties needing to disclose their direct, personal contact information (e.g., phone number or email address) to each other at the outset (U.S. Patent No. 11,003,878, col. 1:18-24).
• The Patented Solution: The invention is a system, typically embodied in a mobile application, where a "publisher" generates a scannable code (like a QR code) associated with a specific "communication profile." A "consumer" scans this code, which does not directly contain the publisher's private contact data. Instead, the scan initiates communication through a secure remote server that mediates the exchange, thereby preserving the privacy of both users. ('’878 Patent, Abstract; col. 3:51-64).
• Technical Importance: This system enables context-specific, temporary, or anonymous digital interactions to be initiated from physical objects or displays, enhancing user privacy and security compared to methods that directly embed contact information into a scannable code. ('’878 Patent, col. 4:36-54).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 19 (Compl. ¶13).
• The essential elements of independent claim 19, a tangible machine-readable medium, include instructions for:
  • Obtaining a scanned image of a code symbol corresponding to a "unique communication profile" of a second user via a mobile app on a first user's device.
  • Extracting a "digital identification code" of the second user from the scanned symbol.
  • Establishing a "secure two-way communication" with the second user, using the first user's mobile app and the extracted digital identification code.
  • Receiving and providing an option to store the second user's contact information, which includes information associated with the "unique communication profile."
  • The establishment of the secure communication "comprises using a secure server" that is "configured to enable private communication."

III. The Accused Instrumentality

Product Identification

The complaint names "Defendant's Surface Duo 2 with the Skype app and/or LinkedIn app" as representative infringing instrumentalities (Compl. ¶14). The allegations extend to other Microsoft products with similar functionality (Compl. ¶14).

Functionality and Market Context

The complaint does not describe the specific functionality of the accused products. It alleges that the combination of the Surface Duo 2 hardware and the Skype or LinkedIn software applications infringes the ’878 Patent (Compl. ¶14). The infringement theory appears to target features within these applications that allow users to scan codes to connect with and communicate with other users.

IV. Analysis of Infringement Allegations

The complaint asserts infringement of at least claim 19 of the ’878 Patent but does not contain detailed infringement allegations or claim charts in the body of the document. Instead, it incorporates by reference "Exhibit B and Exhibit C," which are described as "Representative claim charts demonstrating Defendant's infringement" (Compl. ¶14). These exhibits were not available for this analysis. The narrative alleges that the "Surface Duo 2 with the Skype app and/or LinkedIn app" practices the invention claimed in the ’878 Patent (Compl. ¶14). The infringement theory, as can be inferred, centers on these products enabling a user to scan a code (such as a QR code for a user profile) to initiate a secure communication with another user via a server, thereby allegedly meeting the limitations of claim 19.

No probative visual evidence provided in complaint.

Identified Points of Contention

• Scope Questions: A primary issue may be whether a standard user profile in a general-purpose communication application like Skype or LinkedIn constitutes a "unique communication profile" as contemplated by the patent, which describes profiles created for specific, privacy-controlled interactions ('’878 Patent, col. 4:36-43).
• Technical Questions: The case may turn on what evidence is presented to show that the accused products perform the specific sequence of claim 19. For example, does the scanning process in Skype or LinkedIn "extract... a digital identification code" that is distinct from a user's public-facing username, and is this code then used to establish a "private communication" where underlying contact details are shielded by a "secure server," as the patent describes? ('’878 Patent, col. 3:25-39).

V. Key Claim Terms for Construction

• The Term: "unique communication profile"

  • Context and Importance: This term is central to defining the patented system. The dispute may depend on whether a standard social media or communication app profile, which serves as a general-purpose identity, meets the definition of a "unique" profile created for a specific communication purpose as described in the patent.
  • Intrinsic Evidence for a Broader Interpretation: The specification discusses various profile types, including "Personal" and "Professional," which could be argued to cover standard user accounts ('’878 Patent, Figs. 9-13).
  • Intrinsic Evidence for a Narrower Interpretation: The patent repeatedly frames these profiles in the context of enabling anonymous or private communication, where the profile allows a user to control the selective disclosure of information via a secure server ('’878 Patent, Abstract; col. 4:36-54). This suggests the term may be tied to this specific privacy-preserving function.

• The Term: "secure two-way communication ... wherein the secure server is configured to enable private communication"

  • Context and Importance: This limitation defines the nature of the communication channel. The parties may dispute whether standard encrypted messaging meets this requirement, or if it requires a higher level of "private" communication where user identities are actively shielded by the server.
  • Intrinsic Evidence for a Broader Interpretation: This could be argued to cover any communication that is encrypted end-to-end or between the client and the server, a common feature in modern applications.
  • Intrinsic Evidence for a Narrower Interpretation: The specification links "private communication" to the fact that "either party" does not know the "phone number or email address (or other contact information) of the other party" ('’878 Patent, col. 3:35-39). This suggests the term requires not just data encryption, but also identity-masking mediated by the server.

VI. Other Allegations

Indirect Infringement

The complaint alleges induced infringement, stating that since receiving notice, Microsoft has knowingly and intentionally encouraged infringement by distributing the Skype app along with "product literature, website materials, and/or in-app instructions" that instruct users to use the product in a manner that infringes the ’878 Patent (Compl. ¶¶16-17).

Willful Infringement

The willfulness allegation is based on alleged actual, pre-suit knowledge. The complaint states that Plaintiff provided Microsoft with a notice letter and claim charts on August 22, 2023, and that Microsoft's allegedly infringing conduct continued "Despite such actual knowledge" (Compl. ¶¶15-16).

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

• A core issue will be one of definitional scope: can the term "unique communication profile," which is described in the patent in the context of creating distinct and often anonymous communication channels, be construed to read on a standard, all-purpose user profile within a mass-market application like Skype or LinkedIn?
• A key evidentiary question will be one of functional operation: does the accused functionality in Skype or LinkedIn merely use a QR code as a shortcut to a user's public identifier, or does it implement the claimed sequence of extracting a specific "digital identification code" to establish a "private communication" channel where the server actively shields the parties' underlying contact information, as the patent appears to require?