Symbology Innovations LLC v. Customink LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Symbology Innovations, LLC (Texas)
  • Defendant: CustomInk LLC (Virginia)
  • Plaintiff’s Counsel: McNeely, Hare & War LLP
• Case Identification: 2:17-cv-00001, E.D. Va., 01/03/2017
• Venue Allegations: Venue is alleged to be proper because Defendant is deemed to reside in the district and has allegedly committed acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s online service for designing and selling custom products, particularly its use of QR codes, infringes four patents related to presenting information about an object on a portable electronic device.
• Technical Context: The technology at issue involves using portable electronic devices, such as smartphones, to scan symbology (e.g., QR codes) to retrieve, combine, and display information from local and remote sources.
• Key Procedural History: The four asserted patents are part of a single patent family, with each subsequent patent being a continuation of the prior one, all tracing priority back to the same 2010 application. The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to these patents.

Case Timeline

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

U.S. Patent No. 7,992,773 - System and Method for Presenting Information About an Object on a Portable Electronic Device

• Patent Identification: U.S. Patent No. 7,992,773, issued August 9, 2011.

The Invention Explained

• Problem Addressed: The patent describes a situation where a user of a portable device may have multiple applications capable of scanning symbology, making it potentially "difficult to select the appropriate application for executing the scanning functions" (’773 Patent, col. 3:26-30).
• The Patented Solution: The invention proposes a method where a portable device detects and decodes symbology to get a decode string. This string is used to retrieve a "first amount of information" from one or more applications residing locally on the device and a "second amount of information" from a remote server. The two amounts of information are then combined to create "cumulative information" for display (’773 Patent, Abstract; col. 2:1-7). The system architecture is depicted in the patent's Figure 1, showing a portable device (16) communicating with a remote server (12) via a network (26).
• Technical Importance: The claimed approach sought to enrich the user experience by aggregating information from both local device applications and remote network servers, presenting a more comprehensive result than either source could provide alone.

Key Claims at a Glance

• The complaint asserts independent claim 1, among others (Compl. ¶32).
• The essential elements of independent claim 1 include:
  • detecting symbology associated with an object;
  • decoding the symbology to obtain a decode string;
  • sending the decode string to one or more visual detection applications residing on the portable device;
  • receiving a first amount of information from the local visual detection applications;
  • sending the decode string to a remote server;
  • receiving a second amount of information from the remote server;
  • combining the first and second amounts of information to obtain cumulative information; and
  • displaying the cumulative information.
• The complaint reserves the right to assert other claims, including dependent claims, during discovery (Compl. ¶32).

U.S. Patent No. 8,424,752 - System and Method for Presenting Information About an Object on a Portable Electronic Device

• Patent Identification: U.S. Patent No. 8,424,752, issued April 23, 2013.

The Invention Explained

• Problem Addressed: As a continuation of the ’773 Patent, the ’752 Patent addresses the same general problem of enabling portable devices to efficiently retrieve and present information related to a scanned object (’752 Patent, col. 1:11-16).
• The Patented Solution: The method described in this patent involves a more direct client-server interaction. A portable device captures a digital image of an object's symbology, detects and decodes it locally, sends the resulting decode string to a remote server, receives information back from the server based on that string, and displays the information (’752 Patent, Abstract). Unlike the asserted claim of the '773 patent, this method does not require combining information from local and remote sources.
• Technical Importance: This patent describes a streamlined architecture for symbology-based information retrieval, which aligns with the common use case of QR codes linking a physical object to online content hosted on a server.

Key Claims at a Glance

• The complaint asserts independent claim 1, among others (Compl. ¶50).
• The essential elements of independent claim 1 include:
  • capturing a digital image with a device that is part of a portable electronic device;
  • detecting symbology within the digital image;
  • decoding the symbology to obtain a decode string using visual detection applications on the portable device;
  • sending the decode string to a remote server;
  • receiving information about the object from the server based on the decode string; and
  • displaying the information on the portable device.
• The complaint reserves the right to assert other claims during discovery (Compl. ¶50).

U.S. Patent No. 8,651,369 - System and Method for Presenting Information About an Object on a Portable Device

• Patent Identification: U.S. Patent No. 8,651,369, issued February 18, 2014 (Compl. ¶19).

Technology Synopsis

This patent, also in the same family, discloses a method for a portable device to capture a digital image containing symbology, decode the symbology to get a decode string, send the string to a remote server, receive information based on the string, and display it (Compl. ¶23). The disclosed method is substantially similar to that of the ’752 Patent.

Asserted Claims

At least Claim 1 is asserted (Compl. ¶68).

Accused Features

The accused features include the use of QR codes in internet advertisements and the "Design T-Shirts Online" service (Compl. ¶¶68, 71).

U.S. Patent No. 8,936,190 - System and Method for Presenting Information About an Object on a Portable Device

• Patent Identification: U.S. Patent No. 8,936,190, issued January 20, 2015 (Compl. ¶24).

Technology Synopsis

As the fourth patent in the asserted family, this patent also describes a method where an electronic device captures an image with symbology, decodes it, sends the resulting string to a remote server, receives information back, and displays it on the device (Compl. ¶28).

Asserted Claims

At least Claim 1 is asserted (Compl. ¶86).

Accused Features

The infringement allegations target the use of QR codes in internet advertising and the "Design T-Shirts Online" service (Compl. ¶¶86, 89).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is Defendant’s service for creating and selling customized products, specifically identified as "Design T-Shirts Online" (Compl. ¶35).

Functionality and Market Context

The complaint alleges that Defendant’s infringing activity involves the "using and/or incorporating Quick Response Codes ('QR codes') on printed media (e.g., advertisements, packaging) and/or Internet advertising" (Compl. ¶32). A specific example provided is a feature allowing customers to upload a QR code via the "CustomInk Design Lab" to have it printed on a T-shirt (Compl. ¶37). A screenshot in the complaint shows a two-step process for this feature, labeled "Step 1: Upload QR Code to CustomInk Design Lab" and "Step 2: Customize Your QR Code T-Shirt to Your Spes" (Compl. ¶37, p. 6). The complaint also alleges that Defendant allows consumers "to scan QR codes to be imprinted on Defendant's products" (Compl. ¶38). The complaint alleges these activities are part of Defendant's internet advertising and sales but provides no further detail on the product's market position (Compl. ¶35).

IV. Analysis of Infringement Allegations

The complaint references claim-chart exhibits (Exhibits E, F, G, H) that are not provided with the filed document; therefore, this analysis summarizes the narrative infringement theory from the body of the complaint, and no claim-chart table can be constructed (Compl. ¶¶39, 57, 75, 93).

For all asserted patents, the infringement theory is based on the use of QR codes in connection with Defendant's online design tool and advertising (Compl. ¶¶32, 50, 68, 86). The allegations suggest a divided infringement scenario where Defendant's customers, using their own portable electronic devices, perform some of the claimed method steps (e.g., capturing an image of a QR code), while Defendant performs other steps (e.g., operating the remote server that responds to the scan). The complaint alleges that Defendant has internally tested the functionality of its QR codes (Compl. ¶¶36, 54, 72, 90) and induces its customers to infringe (Compl. ¶¶40, 58, 76, 94).

• Identified Points of Contention:
  • Scope Questions (’773 Patent): A primary question for the ’773 Patent is whether the accused process meets the "combining" limitation of claim 1. Specifically, does a user's device receive a "first amount of information" from a local scanning app and a "second amount of information" from CustomInk's server, and are these two amounts then combined to form "cumulative information"? The analysis may turn on whether a standard QR scanner merely decodes a URL and passes it to a browser (which then fetches server data) or if it provides distinct information that is later merged with server data.
  • Technical Questions (’752, ’369, ’190 Patents): For the other patents, the infringement analysis will likely depend on the specific sequence of operations. A key factual question is what technical steps are performed, and in what order, when a user's device scans a CustomInk QR code. The evidence will need to show that the user's device, prompted by Defendant's system, performs each step of the asserted claims, from capturing an image to decoding the symbology locally and then communicating with the remote server.

V. Key Claim Terms for Construction

’773 Patent: "combining the first and second amounts of information to obtain cumulative information" (Claim 1)

• Context and Importance: This term is central to the infringement and validity analysis for the ’773 Patent, as it defines the core distinction from a simple scan-and-display process. The case may turn on whether the accused system performs an act of "combining" information from two distinct sources (local and remote) as required by the claim.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The Abstract describes the process broadly, which may support an interpretation where displaying information from two sources on the same screen constitutes "combining" (’773 Patent, Abstract).
  • Evidence for a Narrower Interpretation: The flowchart in Figure 7B depicts "COMBINE INFORMATION..." (152) as a distinct process step that occurs before "DISPLAY INFORMATION" (154). This could support a narrower construction requiring a more integrated data-merging function rather than just simultaneous presentation.

’752 Patent: "decoding the symbology to obtain a decode string using one or more visual detection applications residing on the portable electronic device" (Claim 1)

• Context and Importance: The location and means of this "decoding" step are critical. Practitioners may focus on this term because infringement depends on this step being performed locally on the user's device via a specific type of application before the decode string is sent to the server.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification references various commercial scanning applications like "Neomedia's Neo Reader, Microsoft's Smart Tags, Android's Shop Savvy, Red Laser, ScanBuy, etc." as examples of what can perform the decoding, suggesting the term could cover a wide range of software (’752 Patent, col. 3:20-24).
  • Evidence for a Narrower Interpretation: A defendant could argue that the term requires a distinct, installable "application" and does not read on built-in, OS-level, or browser-integrated QR code readers, potentially limiting the claim's scope to a narrower set of user actions.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendant induces infringement "through its customers' actions" for all four patents. The alleged factual basis is that Defendant provides the QR codes and operates the online system with which customers interact, thereby causing them to perform the steps of the patented methods (Compl. ¶¶40, 58, 76, 94).

Willful Infringement

For all asserted patents, the complaint alleges Defendant has knowledge of its infringement "at least as of the service of the present complaint" (Compl. ¶¶31, 49, 67, 85). The prayer for relief seeks a judgment that the infringement is willful, which would support a claim for enhanced damages based on post-filing conduct (Compl. p. 16). No facts supporting pre-suit knowledge are alleged.

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

• A central issue for the entire case will be one of divided infringement: as Defendant's customers perform key steps on their personal devices while Defendant operates the remote server, can the Plaintiff establish that Defendant directs or controls its customers' actions sufficiently to be held liable for infringement of the complete method claims, likely under a theory of inducement?
• A key question of claim scope for the ’773 Patent will be the interpretation of "combining...cumulative information." The viability of this claim will depend on whether the accused system performs a simple data fetch from a server or a more complex aggregation of data from both a local application and a remote server.
• A critical evidentiary question will be one of technical proof: what precise sequence of functions is performed by a user's device and by Defendant's servers when an accused QR code is scanned? The outcome will hinge on whether the Plaintiff can produce evidence that maps the accused process to the specific, ordered limitations of the asserted claims.