DCT

2:17-cv-00627

Code Corp The v. Hand Held Products

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-00627, D. Utah, 06/16/2017
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Utah because its corporate headquarters are located there, substantial events giving rise to the claims occurred there, and Defendant Honeywell maintains a business presence with offices in the district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its redesigned barcode readers do not infringe six of Defendant's patents and further alleges that Defendant's patent enforcement activities constitute unfair competition and tortious interference.
  • Technical Context: The dispute centers on the technology of handheld optical barcode scanners, devices crucial for automated data capture in retail, healthcare, and logistics industries.
  • Key Procedural History: This declaratory judgment action was filed after Defendant Honeywell sued Plaintiff for patent infringement in the District of South Carolina. The complaint states that the filing follows the Supreme Court's decision in TC Heartland, which clarified patent venue law. Plaintiff alleges that several of the patents-in-suit have expired, limiting potential remedies to past damages. A central issue raised is Plaintiff's implementation of a product redesign, which allegedly removes a "single piece optical element" that Plaintiff claims was a critical feature distinguished over the prior art during the patents' prosecution, potentially giving rise to a prosecution history estoppel defense.

Case Timeline

Date Event
1995-09-07 ’413 Patent Priority Date
1996-03-01 ’008 Patent Priority Date
1996-07-18 ’258 Patent Priority Date
1996-09-03 ’223 Patent Priority Date
1998-07-08 ’128 and ’472 Patent Priority Date
2000-03-21 ’258 Patent Issued
2001-06-19 ’008 Patent Issued
2002-12-10 ’223 Patent Issued
2003-03-25 ’413 Patent Issued
2003-08-19 ’128 Patent Issued
2007-09-01 Plaintiff began development of its CR2500 barcode reader
2008-01-01 Plaintiff launched the CR2500 barcode reader
2012-01-01 Plaintiff launched the accused CR2600 product line
2012-01-17 ’472 Patent Issued
2016-09-06 ’413 Patent expired
2016-10-06 ’223 Patent expired
2017-01-19 Defendant filed patent infringement complaint in D. South Carolina
2017-02-27 ’008 Patent expired
2017-04-17 Plaintiff informed Defendant of accused product redesign
2017-05-22 Supreme Court issues TC Heartland decision on patent venue
2017-06-16 Complaint for Declaratory Judgment filed in D. Utah
2017-07-17 ’258 Patent expires

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

U.S. Patent No. 6,607,128 - "Optical Assembly For Barcode Scanner," Issued August 19, 2003

The Invention Explained

  • Problem Addressed: The patent describes the need for compact, easy-to-install, and effective optical assemblies for handheld barcode scanners, particularly for long-range illumination using LEDs, which typically have lower intensity than other light sources (U.S. Patent No. 6,607,128, col. 1:12-25).
  • The Patented Solution: The invention provides a molded support frame with a pair of arms extending from a rear housing. This frame holds an imaging lens, an aperture card, and lamp support units with LEDs in a specific coplanar arrangement. A key component is a "single horizontally extended half cylinder optical element" at the end of the arms that magnifies and focuses the LED light onto the target barcode (U.S. Patent No. 6,607,128, col. 2:6-26; Fig. 2).
  • Technical Importance: The design aims to simplify the assembly of barcode readers and more efficiently utilize the light from LEDs to create a "sharply defined line of illumination" suitable for long-range scanning (U.S. Patent No. 6,607,128, col. 2:50-54).

Key Claims at a Glance

  • The complaint identifies claims 25 and 27 as being asserted by Honeywell (Compl. ¶57). Claim 25 is independent.
  • Independent Claim 25 requires:
    • A support frame having a rear housing containing a solid state imager assembly.
    • First and second light units on either side of a receive optical axis.
    • First and second field stops positioned optically forward of the light units.
    • A single piece optical element on the support frame to image the field stops onto a target, with a center aperture for the imager.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 8,096,472 - "Image Sensor Assembly For Optical Reader," Issued January 17, 2012

The Invention Explained

  • Problem Addressed: The patent addresses the difficulty in controlling the thickness and precise positioning of stacked-up image sensor chips when mounting them in optical readers. Variations in thickness can negatively impact optical performance and focus ('472 Patent, col. 2:1-13).
  • The Patented Solution: The invention proposes a mounting system where the image sensor is mounted on a separate, rigid plate of a tightly controlled thickness. This plate-and-sensor unit is then inserted into a pocket in the optical reader's component frame. This approach isolates the critical positioning from the variable thickness of the sensor itself, allowing for more precise control over the pixel plane's location relative to the device's optics ('472 Patent, col. 4:21-41; Fig. 1).
  • Technical Importance: This assembly method improves manufacturing consistency and optical performance in devices like barcode readers by ensuring the image sensor is securely and precisely positioned ('472 Patent, col. 4:55-61).

Key Claims at a Glance

  • The complaint identifies claims 17, 22, 23, and 24 as being asserted by Honeywell (Compl. ¶57). Claim 17 is independent.
  • Independent Claim 17 requires:
    • An optical assembly for an optical reader.
    • A support frame.
    • A receive optical axis.
    • A pair of lamp brackets on either side of the frame.
    • At least one LED carried by each lamp bracket.
    • A field stop disposed forward of the LEDs.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 6,039,258 - "Hand-Held Portable Data Collection Terminal System," Issued March 21, 2000

  • Technology Synopsis: This patent describes a handheld data collection terminal that provides somatic (tactual) feedback to the operator. It uses a vibrational element to communicate information, such as a successful scan, which is intended to be more effective than audio or visual signals in noisy industrial environments (’258 Patent, Abstract).
  • Asserted Claims: The complaint does not specify claim numbers for the ’258 Patent.
  • Accused Features: The complaint alleges non-infringement because its CR2600 product does not include a "data file reader" and its vibration signals do not constitute "a plurality of tactually distinct vibrational signals during hand-held utilization" (Compl. ¶114).

U.S. Patent No. 6,249,008 - "Code Reader Having Replaceable Optics Assemblies Supporting Multiple Illuminators," Issued June 19, 2001

  • Technology Synopsis: The patent discloses a code reader with multiple types of illuminators (e.g., flash, laser). The reader selects a first illuminator for a read attempt and, if it fails, selects a second type to reattempt the read, thereby improving performance across different conditions and code types (’008 Patent, Abstract).
  • Asserted Claims: The complaint does not specify claim numbers for the ’008 Patent.
  • Accused Features: The complaint alleges non-infringement because its products do not "select a first type and second type of illuminator that coordinate read attempts of optical indicia" (Compl. ¶115).

U.S. Patent No. 6,491,223 - "Autodiscriminating Optical Reader," Issued December 10, 2002

  • Technology Synopsis: The technology relates to a method for an optical reader to automatically discriminate between and decode various 1D and 2D barcode symbologies. The reader uses a parameter table to enable or disable specific decoding programs to optimize performance (’223 Patent, Abstract).
  • Asserted Claims: The complaint references claim 37 (Compl. ¶116).
  • Accused Features: The complaint alleges its CR2600 product does not infringe because it "lacks a processor adapted to perform the steps recited in claim 37" (Compl. ¶116).

U.S. Patent No. 6,538,413 - "Battery Pack With Capacity And Pre-Removal Indicators," Issued March 25, 2003

  • Technology Synopsis: The patent describes a battery pack for a portable electronic device that can indicate its remaining capacity upon an operator's request. It also includes a feature to detect the beginning of the battery removal process, allowing the device to save its operational state before power is lost (’413 Patent, Abstract).
  • Asserted Claims: The complaint does not specify claim numbers for the ’413 Patent.
  • Accused Features: The complaint alleges non-infringement because its products "lack a contact providing a pre-removal indication when the battery pack is being removed from the slot" (Compl. ¶117).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies Plaintiff's CR2600 series of barcode readers and the CR8000 scan engine component contained within them as the instrumentalities at issue (Compl. ¶¶ 52, 56-57).

Functionality and Market Context

  • The complaint asserts that after being sued by Honeywell, Plaintiff "implemented a simple design change in the accused CR2600 barcode reader" (Compl. ¶52). The central feature of this redesign is the elimination of what Honeywell allegedly characterized as a "single piece optical element" (Compl. ¶53). The complaint includes a photograph of the redesigned CR8000 scan engine, which shows the optical components at the front of the device (Compl. p. 19). Plaintiff alleges this redesigned product no longer has the structure asserted in claims of the '128 and '472 patents (Compl. ¶¶ 53, 56). Plaintiff further alleges its products are significant competitors to Honeywell's in the healthcare barcode reader market (Compl. ¶48).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. The analysis below summarizes Plaintiff's primary non-infringement arguments for the lead patents.

'128 Patent Infringement Allegations

Claim Element (from Independent Claim 25) Alleged Non-Infringing Functionality Complaint Citation Patent Citation
a support frame having a rear housing containing a solid state imager assembly... first and second light units... first and second field stops The complaint alleges the accused products lack a rear housing and support frame as described in the patent (Compl. ¶118). ¶118 col. 25:12-25
a single piece optical element received on said support frame disposed to image said first and second field stops onto a target... The complaint alleges that the redesigned CR2600 and CR8000 products "no longer have a single piece optical element." This modification is presented as the primary basis for non-infringement of the '128 Patent (Compl. ¶¶ 53, 56, 118). The provided image shows the redesigned component (Compl. p. 19). ¶53, ¶56, ¶118 col. 25:26-34

'472 Patent Infringement Allegations

Claim Element (from Independent Claim 17) Alleged Non-Infringing Functionality Complaint Citation Patent Citation
An optical assembly for use in an optical reader, said optical assembly comprising: a support frame The complaint alleges the accused products lack a support frame as described by the patent (Compl. ¶119). ¶119 col. 15:45-47
[Implicit limitation based on prosecution history] a single piece optical element The complaint alleges that during prosecution of the '472 Patent, Honeywell distinguished the claims from prior art by arguing they contained a "single piece optical element" (Compl. ¶59). The redesigned product allegedly lacks this structure (Compl. ¶¶ 53, 119). ¶53, ¶59, ¶119 N/A

Identified Points of Contention

  • Scope Questions: A central dispute will be whether the redesigned optical components of the CR2600/CR8000 fall outside the literal scope of the asserted claims. For the '128 Patent, this involves construing "single piece optical element." For the '472 Patent, it involves construing "support frame."
  • Legal Questions: The complaint preemptively raises a defense of prosecution history estoppel, alleging that Honeywell surrendered coverage of "multi-piece optical elements" during prosecution (Compl. ¶¶ 58-62). A key question for the court will be whether Honeywell's arguments to the patent office estop it from now asserting that the redesigned multi-piece product infringes the claims, either literally or under the doctrine of equivalents.

V. Key Claim Terms for Construction

  • The Term: "single piece optical element"
  • Context and Importance: This term appears explicitly in claim 25 of the '128 Patent and is, according to the complaint, central to the patentability of the asserted '472 Patent claims as well (Compl. ¶59). The plaintiff's entire non-infringement defense for these patents is predicated on its redesign to a multi-piece optical structure. Practitioners may focus on this term because its construction will likely determine literal infringement, and the history of its use during prosecution is critical to the estoppel defense against any doctrine of equivalents argument.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification does not provide an explicit definition. A party might argue that "single piece" refers to functional or optical unity rather than requiring a monolithic physical structure. The patent's focus on simplifying assembly could be argued to support any construction that achieves that goal ('128 Patent, col. 2:48-51).
    • Evidence for a Narrower Interpretation: The complaint alleges that Honeywell distinguished prior art as having "multi-piece optical elements" (Compl. ¶59). The detailed description repeatedly refers to the element as a "single piece frame" and "single molded frame" (’128 Patent, col. 2:65-67), which may support a narrower interpretation requiring a single, unitary molded component. The abstract describes "a single molded frame for holding and positioning the components" (’128 Patent, Abstract).

VI. Other Allegations

  • Indirect Infringement: The complaint notes that Honeywell has admitted it is not asserting indirect infringement for the ’413, ’223, and ’008 patents (Compl. ¶111). Plaintiff broadly denies any form of indirect infringement for all patents-in-suit (Compl. ¶113).
  • Willful Infringement: As a declaratory judgment action, the complaint does not allege willfulness. However, it makes extensive allegations that Honeywell's original lawsuit was filed in "subjective bad faith," for "anticompetitive purposes," and with the "intent of putting The Code Corporation out of business" (Compl. ¶¶ 65, 66, 69). These allegations form the basis for separate counts of tortious interference and unfair trade practices.

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

This case appears to present three central questions for the court:

  • A core issue will be one of definitional scope and estoppel: Can the asserted claims, which Plaintiff alleges were allowed based on their inclusion of a "single piece optical element," be read to cover Plaintiff's redesigned multi-component optical system? This will require claim construction and a detailed analysis of the prosecution history to determine if Honeywell is estopped from asserting infringement under the doctrine of equivalents.
  • A key evidentiary question will be one of technical operation: Beyond the "single piece" dispute, do the accused CR2600 readers practice the specific functionalities required by the other four asserted patents related to haptic feedback, multi-illuminator selection, processing steps, and battery pre-removal indication?
  • A broader legal question is one of motive and market conduct: Does the evidence support Plaintiff’s allegations that Honeywell's patent enforcement is not a good-faith effort to protect intellectual property, but rather a pretextual and anticompetitive campaign to eliminate a smaller competitor from the market?