DCT
1:25-cv-01949
Thales DIS France SAS v. Canadian Bank Note Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Thales DIS France SAS (France)
- Defendant: Canadian Bank Note Ltd. and CBN Secure Technologies, Inc. (Canada / United States)
- Plaintiff’s Counsel: Woods Rogers Vandeventer Black; ADDYHART LLC
- Case Identification: 1:25-cv-01949, E.D. Va., 11/03/2025
- Venue Allegations: Venue is asserted based on Defendant CBN Secure Technologies Inc.'s headquarters, manufacturing facility, and principal place of business being located in Danville, Virginia.
- Core Dispute: Plaintiff alleges that Defendant’s government-issued polycarbonate driver's licenses and identification cards infringe a patent related to a security feature that is visible only under backlighting.
- Technical Context: The technology concerns anti-counterfeiting measures in physical identification documents, a critical component of government contracts for state-issued licenses and IDs.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of its patent rights on June 4, 2024, approximately 17 months prior to filing suit. This allegation of pre-suit notice may form the basis for a claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2009-11-13 | ’502 Patent Priority Date |
| 2016-01-26 | ’502 Patent Issue Date |
| 2024-05-28 | North Carolina DMV announces new credential produced by Defendant |
| 2024-06-04 | Plaintiff allegedly provides Defendant notice of the ’502 Patent |
| 2025-11-03 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,242,502 - "Identification Document and a Method of Producing"
- Patent Identification: U.S. Patent No. 9,242,502, titled “Identification Document and a Method of Producing,” issued January 26, 2016 (the “’502 Patent”).
The Invention Explained
- Problem Addressed: The patent addresses the challenge of creating secure identification documents that are difficult to forge and where any attempt at forgery leaves visible marks (’502 Patent, col. 5:6-15, 5:56-59). Conventional multi-layer documents can be targets for disassembly and alteration.
- The Patented Solution: The invention is an identification card with a non-transparent core layer. A "translucent security element" is created in a specific region where this core layer is made thinner than the rest of the card. Within this thinned-down region, a "non-transparent element" (such as a secondary photograph or symbol) is placed. This internal feature is designed to be invisible under normal lighting but becomes visible when the card is held up to a light source (backlit) (’502 Patent, col. 5:60-67; Fig. 2).
- Technical Importance: This design provides a security feature that is difficult for a forger to replicate—requiring manipulation of internal layers—but is simple for an inspector to verify using only a light source (’502 Patent, col.6:46-53).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 of the ’502 Patent (Compl. ¶20).
- Essential elements of independent claim 1 include:
- An identification document comprising a non-transparent core with a photo or information arranged on its surface.
- One or more transparent layers arranged on the front or back surface of the core.
- A translucent security element in the form of a thinner region of the non-transparent core material.
- A non-transparent element located within that thinner region.
- The structure is such that the translucent security element is not visible in normal lighting but can be seen when the document is backlit.
- The complaint states the patent contains two independent claims but focuses its allegations exclusively on claim 1 (Compl. ¶20, ¶31).
III. The Accused Instrumentality
Product Identification
- The Accused Products are polycarbonate, laser-engraved driver's licenses and identification cards manufactured and sold by Defendant CBN, including those supplied to the states of Virginia, New York, Wisconsin, North Carolina, and South Carolina (Compl. ¶1, ¶25). The complaint uses the New York and North Carolina licenses as specific examples (Compl. ¶27).
Functionality and Market Context
- The complaint alleges that the Accused Products are promoted as having "advanced security features" and are made of "100% polycarbonate card that is personalized using laser engraving technology" (Compl. ¶26). The complaint provides images of the New York driver's license, which contains a photograph, identifying text, and other security markings (Compl. p. 9). The complaint alleges that CBN competes directly with Thales in the U.S. market for government-issued identification documents (Compl. ¶25).
IV. Analysis of Infringement Allegations
Claim Chart Summary
- The complaint provides a narrative infringement theory for claim 1, supported by annotated images of the New York driver's license.
’502 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An identification document comprising: a non-transparent core on the upper or lower surface of which a photo or information is arranged... | The accused New York driver's license is an identification document that includes a non-transparent core with a photo and other information printed on it. | ¶30, ¶32 | col. 5:16-18 |
| ...and one or more layers of a transparent material arranged on at least a back or a front surface of said core... | The accused cards allegedly have translucent areas and transparent material layered above the core. | ¶33 | col. 5:19-22 |
| ...wherein the identification document has a translucent security element in the form of a thinner region where the thickness of the non-transparent core material is smaller, but not equal to zero, as compared to the thickness of the non-transparent core material in other parts of said core... | The complaint alleges that when the card is backlit, areas with different levels of opacity become visible, which are allegedly formed by differing thicknesses of the non-transparent core material. An image shows "Translucent Areas" on the front and back of the card (Compl. p. 12). | ¶34, ¶35 | col. 7:54-59 |
| ...and contains a non-transparent element located in said thinner region... | The complaint points to a specific feature, labeled "area C," that is allegedly visible only when backlit, identifying this as the claimed non-transparent element. | ¶36 | col. 7:59-60 |
| ...such that the translucent security element cannot be seen in normal lighting conditions from an upper surface of the identification document, and if the upper surface is viewed in backlighting conditions, the translucent security element can be seen from the upper surface. | The complaint provides a side-by-side comparison showing a portion of the accused card's back side in normal lighting and with backlighting, asserting that certain features are only visible when backlit (Compl. pp. 13-14). | ¶37 | col. 7:60-67 |
Identified Points of Contention
- Structural Questions: A central question will be whether the visual effects shown in the complaint's images are produced by the specific physical structure required by claim 1—namely, a "thinner region" of the "non-transparent core." The complaint alleges this structure exists but provides no direct evidence, such as a cross-sectional analysis of an accused card. The defense may argue that the translucent effect is achieved through alternative, non-infringing means, such as specialized inks or distinct material layers rather than variations in core thickness.
- Scope Questions: The interpretation of "non-transparent core" could be a point of dispute. The complaint's allegations presume a single core structure whose thickness varies. If the accused cards are constructed from multiple layers of varying opacity, a question may arise as to whether this assembly constitutes the claimed "non-transparent core."
V. Key Claim Terms for Construction
The Term: "non-transparent core"
- Context and Importance: This term defines the fundamental component of the claimed invention. The entire security feature is predicated on creating a "thinner region" of this specific core. Practitioners may focus on this term because the construction of modern, multi-layer ID cards may complicate what constitutes a single "core."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests some flexibility, stating that "it is not necessary for the entire material used in the core 46 to be non-transparent, but instead it is also possible to include one or more transparent layers 42 in the core 46, as long as it is ensured that the core as a whole has the required minimum opacity" (’502 Patent, col. 6:14-18).
- Evidence for a Narrower Interpretation: The claim language recites "a non-transparent core" in the singular. The patent figures consistently depict a distinct, unitary layer labeled as the core (e.g., element 6 in Fig. 2), suggesting a more limited definition than a composite of multiple layers.
The Term: "a thinner region where the thickness of the non-transparent core material is smaller"
- Context and Importance: This phrase describes the specific physical structure that creates the "translucent security element." The infringement analysis will depend on whether the accused products create a translucent effect using this precise mechanism.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s overall objective is to create a security element visible only in backlight. A party might argue that the term should be interpreted functionally to cover structures that achieve this same result through functionally similar means.
- Evidence for a Narrower Interpretation: Claim 1 explicitly defines the translucent element as being "in the form of a thinner region." The specification reinforces this structural limitation, describing a tool with a "protruding part that during lamination penetrates into some of the layers and 'pushes' the cavity 15 into the material" to create the thinned area (’502 Patent, col. 6:27-30). This suggests the claim requires a specific physical depression or thinning of the core layer itself.
VI. Other Allegations
- Indirect Infringement: The complaint includes a count for induced infringement, alleging that Defendant knowingly encourages and instructs customers, end-users, and distributors to use, sell, and import the Accused Products, thereby causing direct infringement (Compl. ¶44-45).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported "full knowledge of the patent" (Compl. ¶41). The complaint specifically alleges that Defendant has been aware of the ’502 Patent since "at least June 4, 2024, when Thales provided notice to CBN of Thales’ rights" (Compl. ¶42). The complaint further alleges that Defendant's inducement was knowing, willful, and deliberate (Compl. ¶49).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural verification: does the internal construction of the accused licenses actually feature a "thinner region" of a "non-transparent core," as claimed in the patent? The case may depend heavily on evidence from discovery, such as product teardowns and manufacturing specifications, to determine if the visual evidence presented in the complaint corresponds to the claimed physical structure.
- A related question will be one of claim construction: how will the court define "non-transparent core" in the context of a modern, multi-layered identification card? Whether this term is construed to mean a single, monolithic layer or can encompass a composite of different materials will be critical in determining the scope of the patent and whether the accused products infringe.