Safety Direct LLC v. T-Mobile US Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Safety Direct LLC (Delaware)
  • Defendant: T-Mobile US, Inc. (Delaware)
  • Plaintiff’s Counsel: Murthy Patent Law Inc.
• Case Identification: 2:23-cv-01930, W.D. Wash., 12/14/2023
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains its principal place of business in the district, has committed acts of patent infringement in the district, and has an established place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s smartwatch products infringe a patent related to systems and methods for the automatic loss prevention of mobile devices.
• Technical Context: The technology concerns proximity-based anti-theft systems that trigger an immediate alarm when a mobile device is separated from a companion trigger device by a short, user-defined distance.
• Key Procedural History: The complaint notes that the inventor assigned the patent-in-suit to the Plaintiff on June 20, 2023. Plaintiff alleges that Defendant received actual notice of the patent and its alleged infringement on December 6, 2023, via messages sent to its corporate counsel. The complaint also cites the patent’s Notice of Allowance to highlight what the USPTO considered to be the patent’s inventive concept, which may influence subsequent claim construction and validity arguments.

Case Timeline

Date	Event
2016-05-19	Priority Date for U.S. Patent No. 10,115,292
2018-10-30	U.S. Patent No. 10,115,292 Issued
2023-06-20	Inventor assigned patent to Plaintiff Safety Direct LLC
2023-12-06	Plaintiff alleges sending notice of infringement to Defendant
2023-12-14	Complaint Filed

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

U.S. Patent No. 10,115,292 - System and Method for automatic loss prevention of mobile communication devices

The Invention Explained

• Problem Addressed: The patent’s background section states that conventional device tracking applications are often ineffective against theft because a thief can disable the device before the owner realizes it is missing. Furthermore, existing Bluetooth-based alarms often have ranges (e.g., up to 100 meters) that are too long to be useful, as the device is already out of the owner's sight or control when the alarm sounds (ʼ292 Patent, col. 1:7-24).
• The Patented Solution: The invention is a two-part system designed to prevent loss or theft by triggering an immediate alarm upon separation. It comprises software ("ALPAS") on a mobile device and a companion trigger device ("ALPAT"). When the ALPAT moves beyond a short, user-defined distance from the mobile device (e.g., 2 meters), the ALPAS software automatically activates a loud, conspicuous audio-visual alarm on the mobile device, alerting the owner and others before the device can be taken far away (’292 Patent, Abstract; col. 2:25-34). The system is designed to trigger proactively based on proximity rather than reactively after a loss is discovered.
• Technical Importance: The claimed approach focuses on immediate theft prevention over a short distance, rather than post-theft recovery, which the patent asserts was a shortcoming of prior art tracking apps (’292 Patent, col. 1:12-16).

Key Claims at a Glance

• The complaint asserts independent claims 1 (system) and 6 (method) (Compl. ¶¶19, 21).
• Independent Claim 1 (System) Essential Elements:
  • A mobile device with a processor and memory.
  • Automatic Loss Prevention Alert Software ("ALPAS") installed on the mobile device.
  • A device which functions as an Automatic Loss Prevention Alert Trigger ("ALPAT").
  • An owner-defined distance for alarm activation.
  • The ALPAS having the ability to detect when the ALPAT has moved away beyond the owner-defined distance.
  • The ALPAS having the ability to activate a flashing screen and pre-recorded audio alarm.
  • Specific functional options, including an "at home safe zone" mode and a "'sync to activate'" option for re-arming the system.
• Independent Claim 6 (Method) Essential Elements:
  • Installing ALPAS on a mobile device.
  • The ALPAS communicating with an ALPAT.
  • The ALPAS constantly analyzing whether the ALPAT has moved away beyond an owner-defined distance.
  • Activating a flashing screen and audio alarm if the ALPAT moves beyond the defined distance.
  • Including steps related to functional options like the "at home safe zone" and "'sync to activate'" modes.
• The complaint states it is asserting the "Asserted Claims," which suggests it may later assert dependent claims as well (Compl. ¶24).

III. The Accused Instrumentality

Product Identification

The Timex FamilyConnect smartwatch and the Timex FamilyConnect v1 smartwatch ("the Accused Products") (Compl. ¶24).

Functionality and Market Context

The complaint alleges that the Accused Products are smartwatches marketed, sold, and tested by T-Mobile (Compl. ¶¶24, 26, 28). The complaint does not provide specific details on the technical operation of the Accused Products. The infringement theory appears to rely on the smartwatch itself functioning as the "mobile device" with the "ALPAS," while a paired device (such as a smartphone) or a pre-set geographical boundary may function as the "ALPAT." The complaint alleges T-Mobile sells the Accused Products and distributes literature inducing their use in an infringing manner (Compl. ¶28).

IV. Analysis of Infringement Allegations

The complaint references a claim chart in "Exhibit 5" but does not include the exhibit itself (Compl. ¶24). It instead provides conclusory statements that the Accused Products "practice the technology claimed by the ’292 Patent" and "satisfy all elements of the Asserted Claims" (Compl. ¶¶24-25). No probative visual evidence provided in complaint.

Identified Points of Contention

• Scope Questions: The core of the dispute may center on whether the Accused Products' architecture fits within the patent's claimed structure. A primary question is whether a paired smartphone or a software-defined geofence constitutes "a device which functions as an Automatic Loss Prevention Alert Trigger ('ALPAT')" as that term is used in the claims. A related question is whether the Accused Products' features can be mapped to the specific claim limitations of an "'at home safe zone' mode" and a "'sync to activate' option."
• Technical Questions: The complaint lacks specific factual allegations explaining how the Accused Products operate. A key technical question will be what evidence demonstrates that the accused smartwatches perform the specific alarm and reactivation logic described in the claims. For example, what evidence shows that the system "is configured to reactivate if the 'sync-to-activate' option is turned on" after the trigger returns within the defined distance, as required by both asserted independent claims?

V. Key Claim Terms for Construction

1. "a device which functions as an Automatic Loss Prevention Alert Trigger (“ALPAT”)" (Claim 1)

• Context and Importance: This term is central to defining the physical or logical scope of the claimed system. The definition will determine what kind of associated item (e.g., a physical fob, a paired smartphone, a virtual boundary) can meet this limitation. Practitioners may focus on this term because its construction could either limit the patent to a narrow set of hardware configurations or expand it to cover a wider range of modern connected-device ecosystems.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself states the ALPAT "can be a stand-alone small device, or can be an app on a wearable device" (’292 Patent, col. 8:51-53), suggesting it is not limited to a single hardware form factor.
  • Evidence for a Narrower Interpretation: The specification frequently describes the ALPAT as a distinct physical object, such as "a small device that a person can keep with them and optionally secure to a keychain" (’292 Patent, col. 2:36-39). Figure 1 and its description also depict a discrete physical "small mobile container 101" with a "transmitter 102" (’292 Patent, Fig. 1; col. 4:50-58), which could support an argument that the term requires a tangible, separate piece of hardware.

2. "the ALPAS is configured to reactivate if the “sync-to-activate” option is turned on" (Claim 1)

• Context and Importance: The complaint highlights this specific functionality, drawn from the prosecution history, as disclosing the "inventive concept" (Compl. ¶20). Therefore, establishing whether the Accused Products perform this exact function will be critical for infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party might argue this covers any general re-arming or re-activation feature common in proximity alert systems.
  • Evidence for a Narrower Interpretation: The claim specifies a particular sequence of events: "if the ALPAT is taken more than the owner-defined distance away... and then returns to within the owner-defined distance... the ALPAS is configured to reactivate" (’292 Patent, col. 8:62-66). This suggests a specific "return-and-reactivate" logic, not just any method of turning the system back on. The detailed description further explains this as a "sync-to-activate" system that automatically activates when the devices come back into proximity (’292 Patent, col. 3:25-34).

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement based on Defendant distributing "product literature and website materials" that allegedly instruct users to operate the Accused Products in an infringing manner (Compl. ¶28). It also alleges contributory infringement, asserting the products are "especially made or adapted for infringing" and have "no substantial non-infringing use" (Compl. ¶30).

Willful Infringement

The willfulness allegation is based on alleged actual knowledge of the patent and infringement as of December 6, 2023, following alleged notice sent via LinkedIn messages to T-Mobile’s corporate counsel (Compl. ¶27). The complaint alleges that Defendant’s infringement continued despite this notice (Compl. ¶28).

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

1. A core issue will be one of definitional scope: Can the claim term "a device which functions as an Automatic Loss Prevention Alert Trigger (“ALPAT”)", which the patent specification primarily describes as a small, physical object, be construed to read on a paired smartphone or a software-defined geofence as may be used by the accused smartwatch system?
2. A second issue will be one of evidentiary sufficiency: The complaint asserts infringement of highly specific functional limitations, such as the "'sync to activate' option" and the "'at home safe zone' mode". A key question will be whether discovery produces evidence that the accused smartwatches actually perform these specific, multi-step logical functions as claimed, or if there is a fundamental mismatch in their technical operation.