DCT

2:10-cv-00240

Etagz v. Flambeau

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
    • Plaintiff: Etagz, Inc. (Indiana)
    • Defendant: Flambeau, Inc. (Wisconsin) and T.V. GUIDE MAGAZINE, LLC (Delaware)
    • Plaintiff’s Counsel: Janet M. Conway
  • Case Identification: 2:10-cv-00240, D. Utah, 03/18/2010
  • Venue Allegations: Plaintiff alleges that Defendants have committed acts of infringement within the District of Utah, making venue proper.
  • Core Dispute: Plaintiff alleges that Defendants’ sale of products, specifically toys and magazines, with labels that include a computer-readable medium infringes a patent related to using CD-ROMs in product labels for marketing and data exchange.
  • Technical Context: The technology involves integrating a computer-readable medium, such as a CD-ROM, into a product's hang-tag or label to deliver interactive software to a consumer and establish a data link back to the product vendor.
  • Key Procedural History: The asserted patent, U.S. Patent No. 6,298,332, was the subject of an ex parte reexamination requested on September 20, 2010, approximately six months after this complaint was filed. The reexamination certificate, issued on October 18, 2013, cancelled the two claims asserted in this complaint: claims 11 and 16.

Case Timeline

Date Event
1999-05-06 U.S. Patent No. 6,298,332 Priority Date
2001-10-02 U.S. Patent No. 6,298,332 Issue Date
2010-03-18 Complaint Filing Date
2010-09-20 Reexamination of U.S. Patent No. 6,298,332 Requested
2013-10-18 Reexamination Certificate Issued, Cancelling Claims 11-16

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

U.S. Patent No. 6,298,332 - CD-Rom Product Label Apparatus and Method

The Invention Explained

  • Problem Addressed: The patent background describes the limited success of traditional product registration methods, such as warranty cards, which fail to provide vendors with detailed consumer information or foster brand loyalty (ʼ332 Patent, col. 1:11-23). The patent posits a need for a system to enable a "comparatively long term relationship" between a supplier and a consumer (ʼ332 Patent, col. 1:24-28).
  • The Patented Solution: The invention is a product label, such as a hang-tag, that incorporates a computer-readable medium like a CD-ROM (ʼ332 Patent, Abstract). This medium contains software that delivers engaging content to the consumer (e.g., multimedia presentations, catalogs, games) and facilitates an exchange of information, including user registration, personal preferences, and warranty data, back to the vendor (ʼ332 Patent, col. 1:54-66; Fig. 3).
  • Technical Importance: The invention sought to merge physical product labeling with the interactive digital marketing and data collection capabilities of CD-ROMs, which were a prevalent software distribution medium at the time of the invention (ʼ332 Patent, col. 2:1-4).

Key Claims at a Glance

  • The complaint asserts independent claims 11 and 16 (Compl. ¶9-10). It notes these claims were subsequently cancelled during reexamination ('332 Reexam. Cert., col. 1:16-17).
  • Independent Claim 11 (as originally issued): An article comprising:
    • a label for labeling a product offered for sale;
    • a computer readable medium integrated with the label for storing operational and executable data structures;
    • vendor data comprising instructions to present a presentation from the vendor;
    • profiling data comprising instructions to obtain information corresponding to the purchaser; and
    • linking data comprising instructions to control communication of the purchaser's computer with a vendor's computer.
  • Independent Claim 16 (as originally issued): A method comprising:
    • providing vendor data corresponding to a source of products;
    • recording the vendor data on a computer readable medium;
    • providing a label for securing to products;
    • securing the label to a product; and
    • distributing the label and product to a purchaser.
  • The complaint alleges infringement of "at least" claims 11 and 16, a common formulation to preserve the option to assert other claims (Compl. ¶9-10).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "Duncan Toys products with a label including a computer readable medium" sold by Defendant Flambeau, and "magazines with a label including a computer readable medium" sold by Defendant TV Guide (Compl. ¶9-10).

Functionality and Market Context

The complaint provides minimal technical detail about the accused products' functionality. It alleges only that the products are sold with a "label including a computer readable medium," without describing the nature of the medium, the content or software stored on it, or how it operates (Compl. ¶9-10). The complaint does not provide sufficient detail for analysis of the specific features that allegedly correspond to the patent's claims. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not contain a claim chart or detailed factual allegations mapping specific features of the accused products to the elements of the asserted claims. The infringement theory is presented in a conclusory manner.

The complaint alleges that Defendant Flambeau infringes "at least claims 11 and 16 of the ʼ332 Patent, by, at a minimum, selling Duncan Toys products with a label including a computer readable medium" (Compl. ¶9). It makes an identical allegation against Defendant TV Guide with respect to the sale of magazines (Compl. ¶10). This approach leaves open the central question of whether the accused "computer readable medium" contains the specific executable instructions required by claim 11 (e.g., for profiling and linking) or if the defendants' actions meet the steps of method claim 16.

Identified Points of Contention

  • Scope Questions: A primary question for the court would be whether the accused "label including a computer readable medium" satisfies the functional requirements of the asserted claims. For claim 11, this would involve determining if the medium contains executable instructions for "profiling data" and "linking data," as the claim requires, or merely static content.
  • Technical Questions: The complaint raises the question of what evidence exists to demonstrate that the accused products perform the functions claimed in the patent. For instance, what specific software on the accused medium "obtain[s] information corresponding to the purchaser and relating to the vendor," as recited in claim 11?

V. Key Claim Terms for Construction

The Term: "profiling data" (from Claim 11)

  • Context and Importance: This term is critical to defining the required functionality of the software on the claimed medium. The viability of the infringement allegation for claim 11 would depend on whether the accused products' software performs an action that falls within the construed scope of this term.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests the data can include basic information such as "warranty data, user preferences and motivations" (ʼ332 Patent, col. 1:62-64), which could support a construction covering simple data collection or registration.
    • Evidence for a Narrower Interpretation: The patent also describes "sophisticated profiling" that may result from a user's responses to a "multimedia presentation" (ʼ332 Patent, col. 8:12-14), which could support a construction requiring more than basic information gathering.

The Term: "computer readable medium integrated with the label" (from Claim 11)

  • Context and Importance: This term defines the physical structure of the claimed article. The dispute could center on the required relationship between the label and the medium.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification discloses presenting CD-ROMs using "sleeves, substrates, holders, keepers, labels, tethers, and the like" (ʼ332 Patent, col. 3:8-13), suggesting "integrated" could encompass various forms of physical association.
    • Evidence for a Narrower Interpretation: The patent's figures and frequent reference to a "CD-ROM 'hang-tag'" (ʼ332 Patent, col. 2:17-18; Fig. 3) could support a narrower reading where the medium and label form a more unitary object.

VI. Other Allegations

  • Indirect Infringement: The complaint does not contain allegations of indirect infringement, such as induced or contributory infringement.
  • Willful Infringement: The complaint does not allege willful infringement or plead facts suggesting Defendants had pre-suit knowledge of the ʼ332 Patent.

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

  • A threshold, and potentially dispositive, procedural question is the impact of reexamination: what is the legal effect of the cancellation of the only two asserted claims (11 and 16) during the ex parte reexamination of the ʼ332 Patent, which was initiated after the complaint was filed? Unless the complaint was amended to assert different, surviving claims, this event would appear to foreclose the asserted basis for relief.
  • Assuming the claims were still valid, a key evidentiary question would be one of functional correspondence: does the accused "computer readable medium" on the toys and magazines contain the specific, multi-part executable software for user profiling and vendor linking as required by Claim 11, or is there a fundamental mismatch between the complaint's conclusory allegations and the accused products' actual technical operation?
  • Finally, a central issue of claim construction would likely be the required scope of "profiling data." The case could turn on whether this term can be construed to cover basic user registration or if it requires the more complex, interactive data-gathering functions detailed in the patent's preferred embodiments.