DCT
2:17-cv-00820
Hand Held Products v. Code Corp The
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hand Held Products, Inc., Intermec Technologies Corporation, and Intermec IP Corporation (d/b/a Honeywell Scanning & Mobility) (Delaware, Washington)
- Defendant: The Code Corporation (Delaware)
- Plaintiff’s Counsel: K&L Gates LLP
- Case Identification: 2:17-cv-00167, D.S.C., 01/19/2017
- Venue Allegations: Plaintiff alleges venue is proper because its principal place of business is in the District of South Carolina, and Defendant is subject to personal jurisdiction and has allegedly committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s CR2600 barcode reader and similar products infringe six patents related to optical assembly design, illumination methods, battery pack features, user feedback systems, and image processing techniques.
- Technical Context: The technology concerns handheld barcode scanners, which are critical for efficiency and accuracy in sectors such as healthcare, retail, and logistics.
- Key Procedural History: The complaint alleges that Defendant has been aware of U.S. Patent No. 6,607,128 since at least 2006, when Defendant cited it during the prosecution of its own patent. This allegation of pre-suit knowledge is central to the claim of willful infringement for that patent. Two asserted patents ('413 and '223) are noted as expired, limiting the remedy to past damages.
Case Timeline
| Date | Event |
|---|---|
| 1996-03-01 | U.S. Patent No. 6,249,008 Priority Date |
| 1996-07-18 | U.S. Patent No. 6,039,258 Priority Date |
| 1996-09-03 | U.S. Patent No. 6,491,223 Priority Date |
| 1999-04-27 | U.S. Patent No. 6,538,413 Priority Date |
| 2000-03-21 | U.S. Patent No. 6,039,258 Issued |
| 2001-06-19 | U.S. Patent No. 6,249,008 Issued |
| 2001-11-15 | U.S. Patent No. 6,607,128 Priority Date |
| 2002-12-10 | U.S. Patent No. 6,491,223 Issued |
| 2003-03-25 | U.S. Patent No. 6,538,413 Issued |
| 2003-08-19 | U.S. Patent No. 6,607,128 Issued |
| 2003-08-20 | U.S. Patent No. 8,096,472 Priority Date |
| 2006-01-01 | Earliest alleged date of Defendant's awareness of '128 Patent |
| 2012-01-17 | U.S. Patent No. 8,096,472 Issued |
| 2017-01-19 | Complaint Filed |
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 addresses the need for compact, easily installed, and adjustable optical units for handheld barcode scanners that use Light Emitting Diodes (LEDs) for illumination, a technology that often presents challenges in assembly and alignment compared to other light sources. (U.S. 6,607,128 Patent, col. 1:26-31).
- The Patented Solution: The invention describes a single, molded support frame that holds a solid-state imager, light units (like LEDs), and optical components in a precise relationship. The assembly uses a "single piece optical element" with a central aperture for the imager and integrated lenses for the light sources, simplifying construction and alignment. (U.S. 6,607,128 Patent, Abstract; col. 3:55-67).
- Technical Importance: This approach aimed to create more compact and robust barcode readers by integrating multiple optical functions into fewer, precisely molded components, potentially reducing manufacturing complexity and cost. (U.S. 6,607,128 Patent, col. 2:57-62).
Key Claims at a Glance
- The complaint asserts independent claim 25. (Compl. ¶51).
- Essential elements of claim 25 include:
- A support frame with 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 disposed optically forward of the respective light units.
- A single piece optical element that images the field stops onto a target and has a center aperture on the receive optical axis.
- The complaint reserves the right to assert additional claims. (Compl. ¶59).
U.S. Patent No. 8,096,472 - Image Sensor Assembly for Optical Reader, Issued January 17, 2012
The Invention Explained
- Problem Addressed: As a continuation of the technology in the ’128 Patent, this patent continues to address the challenge of creating compact and effective optical assemblies for barcode readers using LED light sources. (U.S. 8,096,472 Patent, col. 1:11-15).
- The Patented Solution: The invention describes an optical assembly comprising a support frame, a solid-state imager, and imaging optics. It specifies first and second "horizontally extending field stop apertures" positioned in front of two light sources, and a "single optical element...of elongated shape" that transmits light from the sources and allows an image to pass through an opening to the imager. (U.S. 8,096,472 Patent, Abstract; col. 2:25-45).
- Technical Importance: The claimed configuration provides a specific geometric arrangement of light sources, apertures, and optics intended to produce a sharply defined line of illumination suitable for barcode reading. (U.S. 8,096,472 Patent, col. 2:4-7).
Key Claims at a Glance
- The complaint asserts independent claim 17. (Compl. ¶69).
- Essential elements of claim 17 include:
- A support frame, a solid state imager, and imaging optics defining an optical axis.
- First and second light sources.
- First and second horizontally extending field stop apertures positioned in front of the respective light sources.
- A single optical element of elongated shape that transmits light from the sources, has an opening for a target image to pass through, and includes a surface perpendicular to the optical axis.
- The complaint reserves the right to assert additional claims. (Compl. ¶78).
U.S. Patent No. 6,249,008 - Code Reader Having Replaceable Optics Assembly Supporting Multiple Illuminators, Issued June 19, 2001
- Technology Synopsis: The patent addresses the problem that different illuminator types (e.g., flash, laser) have different performance characteristics, and a single reader may perform poorly in some situations. The solution is a method where a code reader selects a first type of illuminator for a read attempt, and if that attempt is unsuccessful, it automatically selects a second type of illuminator for a subsequent attempt. (U.S. 6,249,008 Patent, Abstract; col. 2:8-16).
- Asserted Claims: Independent claim 1. (Compl. ¶88).
- Accused Features: The complaint alleges that the accused CR2600 product practices U.S. Patent 8,448,862, which describes sequencing different light sources. Plaintiff alleges that a device practicing the '862 patent inherently practices the method of claim 1 of the '008 patent. (Compl. ¶¶90-94).
U.S. Patent No. 6,538,413 - Battery Pack with Capacity and Pre-Removal Indicators, Issued March 25, 2003
- Technology Synopsis: The patent addresses the problem of operators being unaware of a battery's remaining charge and the abrupt loss of data if a battery is removed during operation. The invention is an electronic device with a battery pack that includes a "pre-removal indication" when the pack is being removed from its slot, where that indication comprises the battery's remaining capacity level. (U.S. 6,538,413 Patent, Abstract; col. 2:20-27).
- Asserted Claims: Independent claim 1. (Compl. ¶102).
- Accused Features: The accused CR2600 reader includes a removable battery pack with indicator lights that illuminate to show the capacity level when a user removes the battery from its slot in the reader. (Compl. ¶¶47, 108).
U.S. Patent No. 6,039,258 - Hand-Held Portable Data Collection Terminal System, Issued March 21, 2000
- Technology Synopsis: The patent addresses the problem of providing effective user feedback in noisy industrial environments where audible signals may be missed. The invention is a hand-held data collection terminal with an integrated "somatic communications system" that provides tactile feedback to the operator by producing a "plurality of tactually distinct vibrational signals" during use. ('’258 Patent, Abstract; col. 2:27-35).
- Asserted Claims: Independent claim 99. (Compl. ¶114).
- Accused Features: The accused CR2600 reader contains a vibration motor that produces different vibration signals to indicate different events, such as one vibration for a successful read, four for a failed read, and five for a configuration failure. (Compl. ¶¶118, 122).
U.S. Patent No. 6,491,223 - Autodiscriminating Optical Reader, Issued December 10, 2002
- Technology Synopsis: The patent addresses a method for efficiently processing a 2D image to find and decode a barcode. The invention is an optical reader with a processor that acquires a 2D image, "calculates the activities" of image data elements, and only attempts to decode a barcode if at least one of the calculated activities indicates a "high activity region" is present in the image. (’223 Patent, Abstract; col. 41:33-46).
- Asserted Claims: Independent claim 37. (Compl. ¶133).
- Accused Features: The processor in the accused CR2600 reader allegedly calculates activities in the image data to identify candidate barcode symbols, and when a high activity region is found, it attempts to decode the image. (Compl. ¶138).
III. The Accused Instrumentality
Product Identification
The complaint identifies the "CR2600 barcode reader" as an exemplary accused product, along with other similar barcode scanners sold by Defendant. (Compl. ¶¶42, 49).
Functionality and Market Context
The complaint alleges the CR2600 is a handheld scanner that competes directly with Plaintiff's products, particularly in the healthcare market. (Compl. ¶¶24-25, 27). Key technical features identified in the complaint include its scan engine, which uses both aimer and illumination LEDs, horizontally extending field stops, and multiple sets of light sources. (Compl. ¶¶43-45). The complaint provides an annotated, exploded view of the CR2600 scan engine, identifying four primary components that allegedly map to the patent claims. (Compl. ¶53). The device is also alleged to include a removable, rechargeable battery pack with capacity indicator lights and a vibration motor for user feedback. (Compl. ¶¶47-48).
IV. Analysis of Infringement Allegations
U.S. Patent No. 6,607,128 Infringement Allegations
| Claim Element (from Independent Claim 25) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a. a support frame having a rear housing containing a solid state imager assembly...wherein said rear housing includes a back surface receiving said imager assembly | The CR2600 includes Components 1, 2, and 3, which form the "support frame." Component 1 is the "rear housing" and includes a solid-state imager on its back surface. | ¶54, ¶55 | col. 4:2-10 |
| b. first and second light units disposed on either side of said receive optical axis | Component 1 includes first and second light units on either side of the solid-state imager. The receive optical axis extends away from the imager. | ¶56 | col. 4:26-28 |
| c. first and second field stops, wherein said first field stop is disposed optically forwardly of said first light unit, and wherein said second field stop is disposed optically forward of said second light unit | Component 2 includes two field stops, which are positioned optically forward of the respective first and second light units when the scan engine is assembled. | ¶57 | col. 4:29-33 |
| d. a single piece optical element received on said support frame disposed to image said first and second field stops onto a target, said single piece optical element having a center aperture centered on said receive optical axis | Component 4 is a single piece optical element received on the support frame. It is disposed to image the field stops onto a barcode and has a center aperture centered on the receive optical axis. | ¶58 | col. 4:34-40 |
Identified Points of Contention
- Scope Questions: The complaint's mapping of claim terms to the accused device's components may raise claim construction issues. For example, the analysis will question whether "rear housing" as understood in the patent can be read upon Component 1, which the complaint alleges not only serves as the housing but also contains the imager and the light units. (Compl. ¶55). The definition of "support frame" as comprising three separate physical components (Components 1, 2, and 3) may also be a point of contention.
- Technical Questions: The complaint relies heavily on an annotated exploded view of the CR2600 scan engine. (Compl. ¶53). A key evidentiary question will be whether this visual depiction and the associated allegations accurately reflect the assembly and optical operation of the accused device in a way that satisfies the claim limitations, particularly the requirement that the "single piece optical element" images the "field stops" onto the target.
U.S. Patent No. 8,096,472 Infringement Allegations
| Claim Element (from Independent Claim 17) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a. a support frame; b. a solid state imager; c. imaging optics supported by said support frame and defining an optical axis... | The CR2600 includes a "support frame" (Components 1, 2, and 3), a solid-state imager (on Component 1), and imaging optics (at the center of Component 2) for focusing a target image. | ¶71, ¶72, ¶73 | col. 2:25-30 |
| d. a first light source; e. a second light source | The CR2600 includes first and second light sources on Component 1. | ¶74 | col. 2:31-32 |
| f. wherein there is defined by the optical assembly a first horizontally extending field stop aperture...a second horizontally extending field stop aperture | Component 2 of the CR2600 barcode reader defines these first and second apertures. | ¶75 | col. 2:33-36 |
| g. wherein the first horizontally extending field stop is positioned in front of the first light source, and wherein the second horizontally extending field stop is positioned in front of the second light source | The apertures defined by Component 2 are positioned in front of the respective light sources when the scan engine is assembled. | ¶75 | col. 2:37-40 |
| h. a single optical element supported by the support frame and being of elongated shape... | Component 4 is a single optical element, supported by the support frame, and has an elongated shape with first and second outer ends. | ¶76 | col. 2:41-45 |
| i. the single optical element being disposed so that light from the first light source and from the second light source is transmitted through the single optical element | Light from the first and second light sources is transmitted through Component 4. | ¶76 | col. 2:46-48 |
| j. wherein the single optical element has an opening...and...includes a surface extending in perpendicular alignment with the optical axis | Component 4 includes an opening for an image to pass through and a surface extending in perpendicular alignment with the optical axis. | ¶77 | col. 2:49-54 |
Identified Points of Contention
- Scope Questions: The construction of "horizontally extending field stop aperture" will be a central dispute. The analysis will question whether the structures "defined" by Component 2 meet the specific geometric and functional requirements of this term as used in the patent.
- Technical Questions: As with the ’128 Patent, the complaint's theory relies on the physical relationship between the four identified components. A factual question will be whether Component 4, the alleged "single optical element," actually performs all the functions required by the claim, such as transmitting light from the sources while simultaneously allowing an image to pass through an opening undisturbed.
V. Key Claim Terms for Construction
Term from the ’128 Patent: "single piece optical element"
Context and Importance
This term appears in claim 25 and is central to the patent's goal of creating a compact, integrated assembly. The infringement analysis for the CR2600 hinges on whether "Component 4" (Compl. ¶58), a single physical part, qualifies as this element by performing all its recited functions.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The claim language requires the element to be a "single piece" that performs two functions: imaging the field stops and having a center aperture. The specification may describe the element in functional terms, potentially supporting a construction that covers any single component performing these roles, regardless of its specific material or manufacturing method. (U.S. 6,607,128 Patent, col. 4:34-40).
- Evidence for a Narrower Interpretation: The patent's detailed description and figures may depict the "single piece optical element" with specific structural features, such as being molded from a particular type of plastic or having integrated cylindrical lenses. A defendant may argue these specific embodiments limit the term's scope to elements sharing those features. (U.S. 6,607,128 Patent, FIG. 4; col. 3:55-67).
Term from the ’472 Patent: "horizontally extending field stop aperture"
Context and Importance
This term is a key limitation in claim 17, distinguishing the claimed assembly. The infringement allegation rests on the assertion that "Component 2" of the accused device "defines" such apertures. (Compl. ¶75). Practitioners may focus on whether this component, as depicted, creates an "aperture" with the required "horizontally extending" characteristic.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification may describe the purpose of the field stop aperture as shaping the illumination into a horizontal line. (U.S. 8,096,472 Patent, col. 2:4-7). This could support a functional definition where any structure that creates a horizontally elongated opening for light to pass through would meet the limitation.
- Evidence for a Narrower Interpretation: The patent may use the term in a more precise optical sense, and may show specific shapes or aspect ratios in its figures. (U.S. 8,096,472 Patent, FIG. 10). A defendant could argue that the term requires a specific structure, such as a simple slit, rather than a more complex shape that may be present in the accused device.
VI. Other Allegations
- Indirect Infringement: For the '128, ’472, and '258 patents, the complaint alleges induced infringement based on Defendant providing the CR2600 barcode readers to users with instructions on how to use them, which allegedly causes the users to directly infringe. (Compl. ¶¶62, 81, 126).
- Willful Infringement: The complaint alleges willful infringement of the '128 Patent based on pre-suit knowledge dating back to at least 2006, when Defendant allegedly cited the patent during the prosecution of its own patent application. (Compl. ¶¶61, 65). For the '472, '008, and '258 patents, willfulness is alleged based on knowledge of the patents acquired no later than the filing of the complaint, thereby covering any ongoing, post-suit infringement. (Compl. ¶¶84, 98, 129).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the structural terms from the optical assembly patents ('128 and '472), such as "support frame," "rear housing," and "horizontally extending field stop aperture," be construed to cover the multi-part physical components of the accused CR2600 scan engine as alleged by Plaintiff?
- A second central question will be one of evidentiary proof: for the method and system patents ('008, '258, '223), what evidence will show that the accused device's software and hardware actually perform the specific functional steps required by the claims, such as sequencing between different types of illuminators or calculating image "activity" to trigger a decode attempt? The complaint's novel infringement theory for the '008 patent, which relies on the teachings of Defendant's own patent, will likely face significant legal and factual scrutiny.
- Finally, the allegation of pre-suit knowledge of the '128 patent since 2006 creates a critical question of willfulness: if infringement of that patent is found, the court will need to determine whether Defendant's conduct was egregious enough to warrant enhanced damages, a determination that will depend heavily on the evidence of its long-standing awareness of the patent.