DCT

1:23-cv-01303

Pierdiemco LLC v. JJ Keller & Associates Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-01303, E.D. Wis., 10/03/2023
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of Wisconsin because Defendants maintain their corporate headquarters and have allegedly committed acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s fleet management and electronic logging device (ELD) systems infringe thirteen patents related to geofencing, location tracking with tiered administrative access, and conveying event information.
  • Technical Context: The technology domain is vehicle fleet management and logistics, a market where location tracking and hours-of-service logging are critical for operational efficiency and regulatory compliance.
  • Key Procedural History: The complaint states that related, non-asserted patents from the same family have been subject to extensive litigation in the Eastern District of Texas against eleven companies, all of which resulted in licensing agreements. The complaint also notes that these prior litigations involved thirteen Inter Partes Review (IPR) petitions, and that the prior art from those proceedings was submitted to the USPTO for consideration during the prosecution of the patents-in-suit. Prior claim construction orders from these litigations are also referenced.

Case Timeline

Date Event
2005-12-23 Priority Date for all Patents-in-Suit
2017-06-13 U.S. Patent No. 9,680,941 Issues
2018-01-16 U.S. Patent No. 9,871,874 Issues
2018-07-10 U.S. Patent No. 10,021,198 Issues
2019-04-30 U.S. Patent No. 10,277,689 Issues
2019-05-07 U.S. Patent No. 10,284,662 Issues
2019-08-13 U.S. Patent No. 10,382,966 Issues
2019-08-27 U.S. Patent No. 10,397,789 Issues
2020-03-24 U.S. Patent No. 10,602,364 Issues
2020-10-27 U.S. Patent No. 10,819,809 Issues
2021-07-13 U.S. Patent No. 11,064,038 Issues
2022-04-26 U.S. Patent No. 11,316,937 Issues
2023-04-04 U.S. Patent No. 11,622,237 Issues
2023-08-01 U.S. Patent No. 11,716,595 Issues
2023-10-03 Complaint Filed

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

U.S. Patent No. 9,680,941 - Location Tracking System Conveying Event Information Based on Administrator Authorizations

Issued June 13, 2017.

The Invention Explained

  • Problem Addressed: The complaint notes that prior to the invention, traditional location tracking systems could convey a device's location but lacked the ability to correlate that location with user-defined events or manage the conveyance of such event information to specific computing devices (Compl. ¶61).
  • The Patented Solution: The invention describes a system where an "object location event" is defined by a condition relating an object's location to a user-defined zone (i.e., a geofence) (’941 Patent, col. 2:26-31). Information about this event is then conveyed to authorized users' computing devices based on a tiered system of administrative privileges, allowing a service subscriber, distinct from the overall system administrator, to control who receives notifications for their specific group, thereby enhancing privacy and control (Compl. ¶43-44).
  • Technical Importance: This approach provides a more granular, user-driven, and privacy-focused method for location-based alerting, moving beyond simple asset tracking to event-based management.

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶92).
  • Essential elements of claim 1 include:
    • Providing a server executing first database management system software that maintains a database for a tracking service used by a plurality of users.
    • Providing a first level of administrative privilege to a first administrator to define groups of users.
    • Providing a second level of administrative privilege to a second administrator (a user in a group) to perform group administrative functions, where the first administrator does not exercise the second level of privilege.
    • The second administrator uses their privilege to specify one or more information access codes that define which users in the group have access to event information.
    • The second administrator also specifies an event condition related to a mobile device's location and a user-defined zone.
    • The system determines when the event condition has been met and conveys an alert only to those users on the specified access list.
  • The complaint reserves the right to assert dependent claims 3, 4, 11, and 12 (Compl. ¶92).

U.S. Patent No. 9,871,874 - A Multi-Level Database Management System and Method for an Object Tracking Service That Protects User Privacy

Issued January 16, 2018.

The Invention Explained

  • Problem Addressed: As with the related ’941 Patent, the technology addresses the need for more sophisticated control over location-based information, with a particular focus on user privacy (Compl. ¶23).
  • The Patented Solution: The invention is a database management system for a tracking service that uses multiple levels of administrative privilege to control access to location data. It enables a service subscriber to define a group of users, set event conditions (e.g., geofences), and specify an access list of authorized recipients for notifications, thereby giving the subscriber, rather than the service provider, control over who receives potentially sensitive location information (’874 Patent, col. 2:7-19; Compl. ¶44-46).
  • Technical Importance: This system architecture shifts control over data dissemination to the end-user or group administrator, directly addressing privacy concerns inherent in persistent location tracking services.

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 44 (Compl. ¶103).
  • Essential elements of claim 1 include a database management system with a first administrator having a first privilege level to define user groups and assign a second administrator within each group. This second administrator has a second privilege level to control conveyance of event notifications within that group, independent of the first administrator.
  • Essential elements of claim 44 are similar but framed as a method, including steps for using the two-tiered administrative privilege structure to define event conditions and control the conveyance of alerts based on an access list specified by the second administrator.
  • The complaint reserves the right to assert dependent claims 11 and 45 (Compl. ¶103).

Multi-Patent Capsules

  • Patent Identification: U.S. Patent No. 10,021,198, Software-Based Mobile Tracking Service with Video Streaming When Events Occur, issued July 10, 2018 (Compl. ¶28).

  • Technology Synopsis: This patent relates to location tracking services where the occurrence of a defined event (e.g., a vehicle entering a geofence) triggers not only a notification but also the transmission of a video stream. This allows for real-time visual confirmation of the event that triggered the alert (’198 Patent, Abstract).

  • Asserted Claims: At least claims 1, 4, and 7 are asserted (Compl. ¶114).

  • Accused Features: The accused features are those within the "Encompass® Video Event Management with Dash Cam Pro" product that allegedly stream video upon the occurrence of specified events (Compl. ¶81).

  • Patent Identification: U.S. Patent No. 10,397,789, Method for Controlling Conveyance of Event Information About Carriers of Mobile Device Based on Location Information Received from Location Information Sources Used by the Mobile Devices, issued August 27, 2019 (Compl. ¶29).

  • Technology Synopsis: This patent is directed to methods for managing event notifications about people or objects ("carriers") with mobile devices. It focuses on the system architecture for receiving location data and using it to trigger and control the flow of event information based on administrative rules (’789 Patent, Abstract).

  • Asserted Claims: At least claim 1 is asserted (Compl. ¶125).

  • Accused Features: The general fleet management and event notification features of the Accused Instrumentalities are implicated (Compl. ¶81-82).

  • Patent Identification: U.S. Patent No. 10,602,364, Method for Conveyance of Event Information to Individuals Interested Devices Having Phone Numbers, issued March 24, 2020 (Compl. ¶30).

  • Technology Synopsis: This patent focuses on a method where event notifications, triggered by location-based conditions, are conveyed to specific devices identified by phone numbers. This allows alerts to be sent via common communication channels like SMS to designated individuals (’364 Patent, Abstract).

  • Asserted Claims: At least claim 3 is asserted (Compl. ¶136).

  • Accused Features: The alert and notification functionalities of the Accused Instrumentalities that send messages to user devices are implicated (Compl. ¶41, 81).

  • Patent Identification: U.S. Patent No. 10,819,809, Method for Controlling Conveyance Of Event Notifications in Sub-Groups Defined Within Groups Based on Multiple Levels Of Administrative Privilege, issued October 27, 2020 (Compl. ¶31).

  • Technology Synopsis: This patent further details the tiered administrative structure, introducing the concept of defining "sub-groups" within larger groups. This allows for even more granular control over which users receive specific event notifications, enabling complex organizational hierarchies to be modeled in the access control system (’809 Patent, Abstract).

  • Asserted Claims: At least claim 1 is asserted (Compl. ¶148).

  • Accused Features: The user and group management features of the Accused Instrumentalities that allow for tiered permissions and administrative roles are implicated (Compl. ¶43-44).

  • Patent Identification: U.S. Patent No. 11,064,038, Method for Tracking Mobile Objects Based on Event Conditions Met at Mobile Object Locations, issued July 13, 2021 (Compl. ¶32).

  • Technology Synopsis: This patent describes methods for tracking mobile objects where events are triggered by conditions being met at the object's specific location. The invention focuses on the logic of defining and detecting these location-based event conditions to trigger notifications (’038 Patent, Abstract).

  • Asserted Claims: At least claim 1 is asserted (Compl. ¶159).

  • Accused Features: The geofencing and event-triggering logic within the Accused Instrumentalities are implicated (Compl. ¶42).

  • Patent Identification: U.S. Patent No. 11,316,937, Method for Tracking Mobile Objects Based on Event Conditions Met at Mobile Object Locations, issued April 26, 2022 (Compl. ¶33).

  • Technology Synopsis: As a continuation of the ’038 patent, this patent further elaborates on the methods for tracking mobile objects and triggering events. It focuses on the systematic process of defining, detecting, and conveying information about location-based events (’937 Patent, Abstract).

  • Asserted Claims: At least claims 1, 2, 3, 4, and 5 are asserted (Compl. ¶170).

  • Accused Features: The geofencing and event-triggering logic within the Accused Instrumentalities are implicated (Compl. ¶42).

  • Patent Identification: U.S. Patent No. 11,622,237, A Method That Logs Locations of a Mobile Computing Device in a Log File, issued April 4, 2023 (Compl. ¶34).

  • Technology Synopsis: This patent is directed to a method for logging the locations of a mobile device into a log file. This logging can be triggered by certain events or conditions, creating a historical record of the device's movements for later review or analysis (’237 Patent, Abstract).

  • Asserted Claims: At least claims 1 and 10 are asserted (Compl. ¶181).

  • Accused Features: The "J. J. Keller® Elogs" and other logging features of the Accused Instrumentalities that record vehicle location and activity are implicated (Compl. ¶81).

  • Patent Identification: U.S. Patent No. 10,284,662, An Electronic Logging Device (ELD) For Tracking Driver of a Vehicle in Different Tracking Modes, issued May 7, 2019 (Compl. ¶35).

  • Technology Synopsis: This patent describes an Electronic Logging Device (ELD) that tracks a driver and vehicle in different modes (e.g., driving vs. non-driving). The invention provides for recording driving events based on driver movement and non-movement into log files, which can be accessed and managed by authorized users (’662 Patent, Abstract; Compl. ¶48).

  • Asserted Claims: At least claims 1, 3, 4, 5, 13, and 14 are asserted (Compl. ¶192).

  • Accused Features: The "J. J. Keller® ELD" products are specifically accused of infringing this patent (Compl. ¶81).

  • Patent Identification: U.S. Patent No. 10,277,689, Method For Controlling Conveyance of Event Information by An Administrator of a Plurality of Electronic Logging Devices (ELDs), issued April 30, 2019 (Compl. ¶36).

  • Technology Synopsis: This patent focuses on the administrative control over a fleet of ELDs. It describes a method where an administrator manages privileges and controls the conveyance of driving event information from multiple ELDs to authorized subscribers of a tracking service (’689 Patent, Abstract; Compl. ¶47).

  • Asserted Claims: At least claims 1, 4, 5, 6, and 7 are asserted (Compl. ¶203).

  • Accused Features: The administrative back-end of the "Encompass® Fleet Management System" that manages a fleet of ELD devices is implicated (Compl. ¶81).

  • Patent Identification: U.S. Patent No. 10,382,966, A Computing Device Carried by A Vehicle for Tracking Driving Events in a Zone Using Location and Event Log Files, issued August 13, 2019 (Compl. ¶37).

  • Technology Synopsis: This patent describes an in-vehicle computing device that tracks driving events within a defined zone (geofence) using location information and event log files. The device is configured to record events like entering or exiting a zone and log this information for later conveyance (’966 Patent, Abstract).

  • Asserted Claims: At least claims 1, 3, 8, 13, and 18 are asserted (Compl. ¶214).

  • Accused Features: The in-vehicle hardware components of the Accused Instrumentalities, such as the ELDs and Compliance Tablets, that perform on-board event logging are implicated (Compl. ¶81).

  • Patent Identification: U.S. Patent No. 11,716,595, A Method For Conveying Event Information Based on Roles Assigned to Users of a Location Tracking Service, issued August 1, 2023 (Compl. ¶38).

  • Technology Synopsis: This patent builds on the concept of administrative privileges by introducing a role-based access control system. Event information is conveyed to users based on roles assigned to them within the tracking service, allowing for more flexible and scalable management of permissions (’595 Patent, Abstract).

  • Asserted Claims: At least claims 1, 4, 5, and 6 are asserted (Compl. ¶225).

  • Accused Features: The user permission and role-management features of the Accused Instrumentalities are implicated (Compl. ¶43-44).

III. The Accused Instrumentality

Product Identification

The complaint identifies the "Accused Instrumentalities" as Defendant's tracking products and services, including the Encompass® Fleet Management System and its associated platforms and solutions (Compl. ¶81). Specific named components include Encompass® Vehicle Tracking Solution, J. J. Keller® Elogs, J. J. Keller Mobile®, J. J. Keller® ELD, and Encompass® Video Event Management with Dash Cam Pro (Compl. ¶81).

Functionality and Market Context

The Accused Instrumentalities are alleged to provide the ability to "monitor and report vehicle fleet activity" (Compl. ¶82). The complaint categorizes the underlying technology of the asserted patents into "geofencing" and "ELD" functionalities, suggesting the accused products provide features for defining geographic zones, tracking when vehicles cross zone boundaries, sending alerts based on such events, and logging driver and vehicle activity for compliance and management purposes (Compl. ¶41-49).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint alleges infringement and incorporates by reference exemplary claim charts (Exhibits A-1 through M-1), which are not included in the provided filing (Compl. ¶86, 97). The narrative allegations are general and do not map specific product features to claim limitations. The following analysis is based on the patent claims and the general descriptions of the accused product functionality and patented technology provided in the complaint.

’941 Patent Infringement Allegations

The complaint alleges that the Accused Instrumentalities, including the Encompass® Fleet Management System, meet all limitations of at least claim 1 of the ’941 Patent (Compl. ¶86, 92). The core of this allegation is that the accused system employs a two-tiered administrative structure. This structure allegedly allows a first administrator (e.g., J. J. Keller) to manage the overall service and create customer groups, while a second administrator (e.g., a fleet manager customer) can independently define event conditions, such as geofences, and control which specific users within their fleet receive alerts when those conditions are met (Compl. ¶44, 47, 81).

’874 Patent Infringement Allegations

Similarly, the complaint alleges that the Accused Instrumentalities infringe at least claims 1 and 44 of the ’874 Patent (Compl. ¶97, 103). The infringement theory appears to be substantively identical to that for the ’941 patent, focusing on the system’s use of a multi-level database and tiered administrative privileges to manage user groups, define event conditions, and control the conveyance of event notifications in a manner that protects user privacy (Compl. ¶43-46).

Identified Points of Contention

  • Scope Questions: The infringement analysis may turn on whether the accused system's user permission hierarchy constitutes the specific "first level of administrative privilege" and "second level of administrative privilege" as claimed, where the first administrator "does not exercise the second level of administrative privilege" (’941 Patent, claim 1; Compl. ¶44). A central question will be whether Defendant’s system architecture for customers and sub-users maps directly onto this claimed two-tiered, independent structure.
  • Technical Questions: A key factual question will be what specific mechanisms the Accused Instrumentalities use to define an "event condition" and an "access list" at the customer/group administrator level. The analysis will require evidence showing that the second-level administrator, not the service provider, has the independent authority to create the rules that trigger and direct notifications as required by the claims.

V. Key Claim Terms for Construction

  • The Term: "a second level of privilege being assigned to a second administrator...for controlling conveyance of the notifications in the corresponding group such that the administrator having the first level of administrative privilege does not exercise the second level of administrative privilege" (’941 Patent, claim 1).
  • Context and Importance: This term is the central feature of the claimed invention, defining the two-tiered, independent administrative structure. The infringement case for multiple patents appears to depend on whether the defendant's system, which manages service for its customers, embodies this specific separation of powers. Practitioners may focus on this term because it distinguishes the claimed invention from a monolithic system where a single administrator controls all user permissions.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the system as enabling various levels of administrator privileges, which could suggest that any system with hierarchical permissions might be covered (’941 Patent, col. 6:40-42).
    • Evidence for a Narrower Interpretation: The detailed description emphasizes the independence of the second administrator, stating they have "control over who receives the notifications in the group independent of the system administrator" (Compl. ¶45). This language, along with specific embodiments, may support a narrower construction requiring a distinct and functional separation of administrative control over notification rules. The complaint also mentions prior court orders construing terms in the patent family, which may become relevant (Compl. ¶76, 79).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b), stating that Defendants provide "user guides documentation and technical information" and "detailed instruction materials" that instruct customers on how to use the Accused Instrumentalities in an infringing manner (Compl. ¶84, 90, 91).
  • Willful Infringement: Willfulness is alleged based on knowledge of the patents-in-suit obtained "at least the time Defendants received notice" through the filing and service of the complaint (Compl. ¶89, 94). This points toward a theory of post-suit willfulness.

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

  • A core issue will be one of structural equivalence: does the accused Encompass® system’s method for managing customer accounts and user permissions embody the specific two-tiered, independent administrative structure required by the claims, or is it a conventional hierarchical system where the top-level administrator retains ultimate control?
  • A key evidentiary question will be one of functional implementation: what specific evidence shows that customers of the accused system (the alleged "second administrators") perform the claimed steps of defining event conditions and independently controlling access lists for notifications, as opposed to merely selecting from pre-configured options provided by the Defendant?
  • A significant procedural question will be the impact of the patent family's history: how will the extensive prior litigation, which resulted in numerous licenses following IPR challenges, affect the parties' strategies regarding validity and infringement, and to what extent will prior claim construction rulings from the EDTX be persuasive or adopted in this case?