DCT
3:17-cv-00153
Symbology Innovations LLC v. Kohler Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Symbology Innovations, LLC (Texas)
- Defendant: Kohler Co. (Wisconsin)
- Plaintiff’s Counsel: MWH Law Group LLP; Ferraiuoli LLC
- Case Identification: 3:17-cv-00153, W.D. Wis., 02/27/2017
- Venue Allegations: Venue is based on Defendant being a Wisconsin corporation that conducts substantial business in the district, including offering for sale and advertising products that allegedly use the patented methods.
- Core Dispute: Plaintiff alleges that Defendant’s use of Quick Response (QR) codes in advertisements for its products, such as the Flipside line of shower heads, infringes four patents related to methods for using a portable electronic device to detect symbology, retrieve information from local and remote sources, and display it.
- Technical Context: The technology at issue involves the common marketing practice of placing machine-readable codes on products or advertisements, which consumers can scan with a smartphone to access additional information online.
- Key Procedural History: The four patents-in-suit constitute a single family. U.S. Patent Nos. 8,936,190, 8,651,369, and 8,424,752 are all continuations of the application that led to U.S. Patent No. 7,992,773. This shared origin and specification may lead to consistent interpretations of common terms across the patents but could also make the entire portfolio vulnerable to a single invalidity theory.
Case Timeline
| Date | Event |
|---|---|
| 2010-09-15 | Earliest Priority Date for all Patents-in-Suit |
| 2011-08-09 | U.S. Patent No. 7,992,773 Issued |
| 2013-04-23 | U.S. Patent No. 8,424,752 Issued |
| 2014-02-18 | U.S. Patent No. 8,651,369 Issued |
| 2015-01-20 | U.S. Patent No. 8,936,190 Issued |
| 2017-02-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,424,752 (the "’752 Patent") - "System and method for presenting information about an object on a portable electronic device," issued April 23, 2013
The Invention Explained
- Problem Addressed: The patent addresses the challenge faced by users of portable electronic devices who have numerous applications and may find it difficult to select the correct one to scan a symbol (e.g., a barcode) and retrieve information about an associated object (’752 Patent, col. 4:20-33).
- The Patented Solution: The invention provides a method where a portable device captures a digital image of symbology, detects and decodes it, and then uses the resulting decode string to retrieve information. Crucially, the described method involves sending the decode string to both one or more local "visual detection applications" on the device and to a remote server. The information received from both the local and remote sources is then combined and displayed to the user (’752 Patent, Abstract; col. 12:46-55). This creates a streamlined, hybrid process for information retrieval.
- Technical Importance: The technology aimed to automate and integrate information gathering from both on-device applications and remote network resources, simplifying the user experience for interacting with real-world objects via their digital devices (’752 Patent, col. 4:34-40).
Key Claims at a Glance
- The complaint asserts one or more claims, including at least dependent Claim 5, which depends from independent Claim 1 (Compl. ¶30). The essential elements of independent Claim 1 are:
- capturing a digital image using a digital image capturing device that is part of a portable electronic device;
- detecting symbology associated with an object within the digital image using a portable electronic device;
- decoding the symbology to obtain a decode string using one or more visual detection applications residing on the portable electronic device;
- sending the decode string to a remote server for processing;
- receiving information about the object from the remote server wherein the information is based on the decode string of the object; and
- displaying the information on a display device associated with the portable electronic device.
- The complaint does not explicitly reserve the right to assert other claims, but standard litigation practice would allow for it.
U.S. Patent No. 8,651,369 (the "’369 Patent") - "System and method for presenting information about an object on a portable device," issued February 18, 2014
The Invention Explained
- Problem Addressed: As a continuation of the '752 patent application, the '369 patent addresses the same technical problem: simplifying the process of using a multi-application portable device to obtain information from visual symbology (’369 Patent, col. 4:20-33).
- The Patented Solution: The solution is functionally identical to that of the '752 Patent, involving the capture, decoding, and dual-path (local and remote) retrieval of information related to a detected symbol. The flow diagrams and system architecture described in the specification are the same (’369 Patent, Abstract; Figs. 7A-7C).
- Technical Importance: The technical contribution remains the integration of on-device and network-based information retrieval initiated by a single scan (’369 Patent, col. 4:34-40).
Key Claims at a Glance
- The complaint asserts at least dependent Claim 5, which depends from independent Claim 1 (Compl. ¶44). The essential elements of independent Claim 1 are:
- capturing a digital image using a digital image capturing device that is part of a portable electronic device;
- detecting symbology associated with the digital image using a portable electronic device;
- decoding the symbology to obtain a decode string using one or more visual detection applications residing on the portable electronic device;
- sending the decode string to a remote server for processing;
- receiving information about the digital image from the remote server wherein the information is based on the decode string; and
- displaying the information on a display device associated with the portable electronic device.
- The complaint does not explicitly reserve the right to assert other claims.
Multi-Patent Capsule: U.S. Patent No. 8,936,190 (the "’190 Patent")
- Patent Identification: U.S. Patent No. 8,936,190, "System and method for presenting information about an object on a portable electronic device," issued January 20, 2015.
- Technology Synopsis: As part of the same patent family, this patent discloses a method for a portable device to streamline information retrieval. The system captures an image of symbology, decodes it, and uses the result to gather and display information from both local device applications and a remote server.
- Asserted Claims: At least dependent Claim 5, which depends from independent Claim 1 (Compl. ¶58).
- Accused Features: The use of QR codes in advertisements that, when scanned by a user's device, cause the device to communicate with Defendant's server to retrieve and display product information (Compl. ¶¶59-63).
Multi-Patent Capsule: U.S. Patent No. 7,992,773 (the "’773 Patent")
- Patent Identification: U.S. Patent No. 7,992,773, "System and method for presenting information about an object on a portable electronic device," issued August 9, 2011.
- Technology Synopsis: This is the parent patent of the family. It describes a method where a portable device detects symbology and sends the resulting decode string to both one or more on-device applications and a remote server. It then receives a "first amount of information" from the local application(s) and a "second amount of information" from the server, combines them into "cumulative information," and displays the result. The patent also describes functionality for the detection system to run in the background.
- Asserted Claims: At least dependent Claim 4, which depends from independent Claim 1 (Compl. ¶72).
- Accused Features: The accused functionality is the same QR code system, with specific allegations that the scanning application on a user's smartphone can "run in the background with respect to other systems associated with the mobile device," supported by a screenshot of the iOS multitasking interface (Compl. ¶¶78-79, p. 19).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is a method employed by Defendant Kohler involving the use of QR codes in advertisements for its products, specifically citing the "Flipside line of shower heads" (Compl. ¶¶30-31).
Functionality and Market Context
- The complaint alleges that Kohler places QR codes in its ads. When a consumer scans one of these codes with a portable electronic device (e.g., a smartphone), the device's scanning application decodes the symbol to obtain a decode string, such as a URL (Compl. ¶34). This string is sent to a remote server, allegedly controlled by Kohler, which in turn sends back product-related information (e.g., a website) that is then displayed on the user's device (Compl. ¶35). The complaint includes a visual of a Kohler ad featuring a QR code (Compl. p. 7) and a screenshot of the resulting "Flipside" product webpage allegedly displayed after a scan (Compl. p. 8).
IV. Analysis of Infringement Allegations
’752 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| capturing a digital image using a digital image capturing device that is part of a portable electronic device; | A consumer uses a portable device, such as a smartphone camera, to capture an image of the QR code in Defendant's advertisement. | ¶33 | col. 11:1-3 |
| detecting symbology associated with an object within the digital image using a portable electronic device; | The scanning technology on the user's portable device detects the pattern of the QR code, which is associated with Defendant's product. | ¶34 | col. 11:4-8 |
| decoding the symbology to obtain a decode string using one or more visual detection applications residing on the portable electronic device; | The scanning technology on the user's device processes the QR code pattern to obtain a decode string (e.g., a URL). | ¶34 | col. 11:9-14 |
| sending the decode string to a remote server for processing; | The user's device sends the decoded string to a remote server for further processing. | ¶34 | col. 11:20-22 |
| receiving information about the object from the remote server wherein the information is based on the decode string of the object; and | The remote server returns information related to Defendant's products/services, such as a website with product details. | ¶35 | col. 11:23-25 |
| displaying the information on a display device associated with the portable electronic device. | The information received from the server, such as the product website, is displayed on the user's portable device. A screenshot shows the 'Flipside' product page displayed on a device (Compl. p. 8). | ¶35 | col. 12:56-61 |
- Identified Points of Contention:
- Scope Questions: The method claims of the '752 patent recite steps performed on a "portable electronic device," which is owned and operated by a consumer. The complaint accuses Kohler, the advertiser. This raises the question of whether Kohler can be held liable for direct infringement when it does not perform every step of the claimed method itself. The viability of the direct infringement claim may depend on whether Kohler is found to "direct or control" the actions of its customers under the standard set forth in Akamai v. Limelight.
- Technical Questions: While the asserted independent claim in the '752 patent (Claim 1) does not explicitly require combining information from local and remote sources, other independent claims in the patent (e.g., Claim 15) and the core description of the invention do ('752 Patent, Abstract). The complaint's allegations focus solely on a one-way path of information from a remote server to the user (Compl. ¶¶34-35). This raises the question of whether the accused method practices the full invention as disclosed, a point that may become critical if other claims are asserted or during claim construction.
’369 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| capturing a digital image using a digital image capturing device that is part of a portable electronic device; | A user captures an image of the QR code in Defendant's ad using a smartphone camera. | ¶47 | col. 13:1-3 |
| detecting symbology associated with the digital image using a portable electronic device; | A scanning application on the user's device detects the QR code pattern within the captured digital image. | ¶48 | col. 13:4-6 |
| decoding the symbology to obtain a decode string using one or more visual detection applications residing on the portable electronic device; | The scanning application decodes the QR code pattern to generate a decode string, such as a URL. | ¶48 | col. 13:7-12 |
| sending the decode string to a remote server for processing; | The user's device transmits the decode string to a remote server. | ¶48 | col. 13:13-14 |
| receiving information about the digital image from the remote server wherein the information is based on the decode string; and | The server returns information, which the complaint alleges is "information about Defendant's products" (Compl. ¶49). This is displayed on the user's device. | ¶49 | col. 13:15-18 |
| displaying the information on a display device associated with the portable electronic device. | The received product information is displayed on the user's smartphone screen, as depicted in the screenshot of the Kohler product webpage (Compl. p. 11). | ¶49 | col. 13:19-21 |
- Identified Points of Contention:
- Scope Questions: The '369 patent faces the same divided infringement question as the '752 patent, as the accused infringer (Kohler) does not perform all the claimed steps.
- Technical Questions: A significant point of contention will be the limitation "receiving information about the digital image from the remote server." The complaint alleges the user receives information about the product (Compl. ¶49). Whether information "about the product" can be considered information "about the digital image" that depicts the product's QR code is a critical question of claim construction.
V. Key Claim Terms for Construction
- Term: "receiving information about the digital image from the remote server" (’369 Patent, Claim 1)
- Context and Importance: This term's construction is central to the infringement analysis for the '369 patent. The infringement theory relies on the server providing product information. If this term is construed narrowly to mean technical data about the image file itself (e.g., resolution, file size, timestamps), the infringement allegation may fail, as there is no indication the accused system provides such data. Practitioners may focus on this term because its plain meaning appears to diverge from the infringement theory presented.
- Intrinsic Evidence for a Broader Interpretation: A party might argue that in the context of the patent's overall purpose—to retrieve information about an object—this phrase should be interpreted as "information derived from the content of the digital image," which would include information about the object represented by the symbology in the image. The specification repeatedly links the symbology to an "object" (’369 Patent, col. 10:55-61).
- Intrinsic Evidence for a Narrower Interpretation: A party could argue that the claim language is precise and should be given its plain and ordinary meaning. The '752 patent, from the same family, claims "receiving information about the object." The use of different language ("about the digital image") in the '369 patent suggests a deliberate choice by the patentee to claim something different and more specific, which should not be read as equivalent.
VI. Other Allegations
- Indirect Infringement: The complaint exclusively pleads counts for direct infringement under 35 U.S.C. § 271. No formal counts for indirect infringement (inducement or contributory infringement) are included, despite the factual pattern—where Kohler provides QR codes for users to scan—aligning with a typical theory of induced infringement.
- Willful Infringement: The complaint alleges that Defendant has had knowledge of infringement for each patent "at least as of the service of the present complaint" (Compl. ¶¶ 29, 43, 57, 71). This allegation supports a claim for enhanced damages based only on post-filing conduct. No facts are alleged that would support a finding of pre-suit knowledge or willfulness.
VII. Analyst’s Conclusion: Key Questions for the Case
- Liability for Divided Infringement: A central legal issue will be whether Symbology can prove that Kohler is liable for direct infringement. Because consumers, not Kohler, perform key steps of the claimed methods (e.g., capturing the image, displaying information), the outcome may hinge on whether Kohler's act of providing the QR codes for scanning constitutes sufficient "direction or control" over consumers to attribute their actions to Kohler under the Akamai standard.
- Claim Construction of "information about the digital image": A key technical and legal battle will likely be fought over the meaning of this phrase in the '369 patent. The case for infringement of this patent may turn on whether this term can be broadly construed to cover information about the product associated with the QR code in the image, or if it is narrowly restricted to technical metadata about the image file, a feature the accused system does not appear to provide.
- Evidentiary Support for "Combining" Information: For the ’773 patent in particular, which claims combining information from local and remote sources, a key evidentiary question will be whether the complaint's allegations can be substantiated. The infringement theory for the '773 patent relies on a two-step retrieval process (Compl. ¶76) that is not clearly described for the other patents. Proving that the accused system actually receives and combines distinct sets of information from both a local application and a remote server will be critical to proving infringement of that patent's core claims.