Case 2:19-cv-00209-JRG Document 174 Filed 09/02/20 Page 1 of 22 PageID #: 7695
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`REDACTED VERSION OF DOCUMENT FILED UNDER SEAL
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`THE HILLMAN GROUP, INC.
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`Plaintiff,
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`v.
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`KEYME, LLC
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`Defendant.
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`Civil Action No. 2:19-cv-00209-JRG
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`KEYME’S MOTION FOR SUMMARY JUDGEMENT OF NON-INFRINGEMENT OF
`U.S. PATENT NO. 10,400,474
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`Case 2:19-cv-00209-JRG Document 174 Filed 09/02/20 Page 2 of 22 PageID #: 7696
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`I.
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`Introduction ..........................................................................................................................1
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`TABLE OF CONTENTS
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`II.
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`Statement Of Issue To Be Decided By The Court ...............................................................1
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`III.
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`Statement Of Undisputed Material Facts .............................................................................1
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`IV.
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`Legal Standard .....................................................................................................................8
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`V.
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`Argument .............................................................................................................................8
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`A.
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`B.
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`C.
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`The Ordinary Meaning Of “Only The Shank” Excludes Receiving More
`Than The Shank. ......................................................................................................8
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`KeyMe Does Not Literally Infringe The Asserted Claims Of The ’474
`Patent As A Matter Of Law ...................................................................................10
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`KeyMe Does Not Infringe The Asserted Claims Of The ’474 Patent Under
`The Doctrine Of Equivalents As A Matter Of Law ...............................................11
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`VI.
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`Conclusion .........................................................................................................................16
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`Case 2:19-cv-00209-JRG Document 174 Filed 09/02/20 Page 3 of 22 PageID #: 7697
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`TABLE OF AUTHORITIES
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`CASES
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`Page
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`Athletic Alternatives, Inc. v. Prince Mfg., Inc.,
`73 F.3d 1573 (Fed. Cir. 1996)........................................................................................... 15
`
`Augme Techs., Inc. v. Yahoo! Inc.,
`755 F.3d 1326 (Fed. Cir. 2014)......................................................................................... 13
`
`Brilliant Instruments, Inc. v. GuideTech, LLC,
`707 F.3d 1342 (Fed. Cir. 2013)......................................................................................... 14
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`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`469 F.3d 1005 (Fed. Cir. 2006)................................................................................... 14, 15
`
`Dolly, Inc. v. Spalding & Evenflo Companies, Inc.,
`16 F.3d 394 (Fed. Cir. 1994)............................................................................................. 13
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`Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc.,
`322 F.3d 1335 (Fed. Cir. 2003)......................................................................................... 15
`
`Lockheed Martin Corp. v. Space Sys./Loral, Inc.,
`324 F.3d 1308 (Fed. Cir. 2003)......................................................................................... 13
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`MorphoSys AG v. Janssen Biotech, Inc.,
`358 F. Supp. 3d 354 (D. Del. 2019) ............................................................................ 14, 15
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`PSN Ill., LLC v. Ivoclar Vivadent, Inc.,
`525 F.3d 1159 (Fed. Cir. 2008)..................................................................................... 7, 12
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`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001)......................................................................................... 13
`
`TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc.,
`529 F.3d 1364 (Fed. Cir. 2008)......................................................................................... 10
`
`UCB, Inc. v. Watson Labs., Inc.,
`927 F.3d 1272 (Fed. Cir. 2019)......................................................................................... 14
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`Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,
`520 U.S. 17 (1997) ............................................................................................................ 12
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`Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc.,
`206 F.3d 1408 (Fed. Cir. 2000)....................................................................... 12, 13, 15, 16
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`ii
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`Case 2:19-cv-00209-JRG Document 174 Filed 09/02/20 Page 4 of 22 PageID #: 7698
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`EXHIBIT LIST
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`Exhibit
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`Document
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`1
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`2
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`3
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`4
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`5
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`6
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`7
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`8
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`Hillman’s Supplemental Disclosure of Asserted Claims
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`U.S. Patent No. 10,400,474
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`Deposition Transcript of Dr. Joshua Phinney (Excerpted)
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`KEYME-011240
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`Opening Expert Report of Joshua W. Phinney, Ph.D., P.E. Regarding Infringement of
`U.S. Patent No. 10,400,474 (Excerpted)
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`Exhibit A to Plaintiff The Hillman Group, Inc.’s Disclosure of Asserted Claims and
`Infringement Contentions (Excerpted)
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`KEYME-057984
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`Merriam-Webster Definition of “Only”
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`iii
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`Case 2:19-cv-00209-JRG Document 174 Filed 09/02/20 Page 5 of 22 PageID #: 7699
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`I.
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`INTRODUCTION
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`Defendant KeyMe respectfully requests the Court grant summary judgment of non-
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`infringement of U.S. Patent Nos. 10,400,474 (the “’474 patent”). The ’474 patent’s asserted
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`claims plainly require a key making machine with “a slot opening in the housing configured to
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`receive only the shank of an existing key.” It is undisputed that KeyMe’s accused key
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`duplication kiosks are configured to receive more than just the shank of a key. Summary
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`judgment of non-infringement is warranted.
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`II.
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`STATEMENT OF ISSUE TO BE DECIDED BY THE COURT
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`1.
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`Whether summary judgment of non-infringement of the ’474 patent should be granted
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`because KeyMe’s accused products include a slot opening that is not configured to receive only
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`the shank of an existing key as required by each asserted claim, but rather is configured to
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`receive more than just the shank of an existing key.
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`III.
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`STATEMENT OF UNDISPUTED MATERIAL FACTS
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`1.
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`Hillman asserts dependent claims 7, 8, 9, and independent claim 20 of the ’474 Patent
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`against KeyMe’s accused key duplication kiosks. Exh. 1 (Hillman’s Supplemental Disclosure of
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`Asserted Claims).
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`2.
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`Claim 1—from which claims 7, 8, and 9 depend—and claim 20 each require a “key
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`making machine, comprising: a housing” as well as “a slot opening in the housing configured to
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`receive only the shank of an existing key . . .” Exh. 2 (’474 patent) at claims 1, 20.
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`3.
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`The ’474 patent clearly describes the “shank” of a key. Specifically, the ’474 patent
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`describes a key “blade 12” with “a head portion 16, and a shank 18 that is integrally formed with
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`head portion 16.” Id. at col. 4:22-23; Fig. 2A.
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`4.
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`Figures 1A through 1C of the ’474 patent depict examples of “key assemblies,” which are
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`made up of two identifiable components: “a blade 12, and a head 14 that is connected to blade
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`12.” Id. at col. 3:39-48. The specification explains the “head 14 may be fixedly or removably
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`connected to blade 12” and “may serve as a handle through which a user generates torque within
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`blade 12, causing an associated lock to turn and open or close.” Id. at 3:51-58.
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`5.
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`The ’474 patent also includes figures describing the separate “blade 12” and “head 14”
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`components individually. Figures 2A through 2C of the ’474 patent specifically depict features
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`of the “key blade” component of the key assembly. Exh. 3 (Phinney Tr.) at 53:16-21.
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`6.
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`As depicted in Figure 2A, the “key blade” is divided into a “head portion 16” and a
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`“shank 18.” Figure 2A includes two brackets along the left side of the figure to distinguish
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`between the “head portion 16” and the “shank 18” of the key blade. These brackets do not
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`overlap. Id. at 107:2-6.
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`7.
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`The ’474 patent explains the “head portion 16” includes the region of the key blade
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`designed to fit the “head 14” and also contains features such as the “square shaped base end 22”
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`and a “pair of shoulders 40.” Exh. 2 (’474 patent) at col. 4:31-62. These features are not part of
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`the “shank 18.” Id.
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`8.
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`The ’474 patent also describes at Figure 11B a blank key being inserted into the slot.
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`Figure 11B depicts “features 187 configured to engage base end 22 and/or shoulders 40 of head
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`portion 16 when the key blank is completely inserted,” id. at col. 15:37-44, and “end stop 185”
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`which “may be movable as the key blank is inserted.” Id. at col. 15:46-47. The patent explains
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`that “It is also contemplated that these characteristics could be used in conjunction with index 44
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`and/or the measured length of shank 18 (i.e., the length measured via end stop 185 of the
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`potentiometer), if desired.” Id. at col. 21:21-24. Thus, the “length of shank 18” is determined by
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`3
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`Case 2:19-cv-00209—JRG Document 174 Filed 09/02/20 Page 8 of 22 PageID #: 7702
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`measuring the portion of the key that is inseited beyond a feature designed to “engage base end
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`22 and/or shoulders 40 of head portion 16” (187) to an “end stop 185.”
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`9.
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`KeyMe’s accused products include a slot entry in a key reader assembly designed to
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`allow a customer to inselt a key for identification and duplication. See Exh. 4 (KEYME-011240)
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`(reproduced below); Exh. 5 (Phinney Opening Rpt.) 1| 63.
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`10.
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`As shown below, the insertion slot in a KeyMe kiosk is configured to receive the shank
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`the base end/shoulders, and additional portions of the head of a key.
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`Case 2:19-cv-00209-JRG Document 174 Filed 09/02/20 Page 9 of 22 PageID #: 7703
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`Figure 2. Design schematic showing insertion of a KWI key
`Figure 1. Picture included in
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`into the slot entry of KeyMe’s kiosks and cited in Dr.
`Hillrnan’s Infringement
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`Phinney’s Opening Report (Exh. 7 (KEYME—057984D.
`Contentions (Exh. 6).
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`11.
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`As shown in images used by Hillnian’s expert to describe the operation of KeyMe’s
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`Accused Products below, the slot opening in each KeyMe kiosk allows the cameras within the
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`kiosk to capture images of the customer’s key that—
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`—-
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`Exh. 5 (Phinney Opening Rpt.) 1] 144, Fig. 26. See also Exh. 3 (Pliiiniey Tr.) at 10818-1103.
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`Figure 3. Bitting camera image from KEYME—041627 at 4529, also cited in Dr. Phinney’s Opening
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`Re I ort as Fi_ure 26.
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`5
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`Case 2:19-cv-00209-JRG Document 174 Filed 09/02/20 Page 10 of 22 PageID #: 7704
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`12.
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`———
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`EXh- 5 G’hilmey Opening RPU 11
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`141.
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`14.
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`Id. at 124:23-25:16.
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`15.
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`. Id. at 116:14-24.
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`16.
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`Because KeyMe kiosks use neural network imaging software that is able to compensate
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`for the degree to which the key has been inserted, as well as its angle, they need not be
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`configured to receive only the shank of an inserted key. Schonfeld Dec. ¶ 47.
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`IV.
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`LEGAL STANDARD
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`To prove infringement, a patentee must prove that every element of a claimed system is
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`present and every step in a claimed method is practiced. See, e.g., PSN Ill., LLC v. Ivoclar
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`Vivadent, Inc., 525 F.3d 1159, 1167-68 (Fed. Cir. 2008). If one element or step is missing, there
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`7
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`cannot be infringement. Courts frequently grant summary judgment of non-infringement when
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`one such element or step is missing. Id. at 1168 (affirming grant of summary judgment because
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`of a missing claim limitation).
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`V.
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`ARGUMENT
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`A.
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`The Ordinary Meaning Of “Only The Shank” Excludes Receiving More
`Than The Shank.
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`The Court was not asked to construe the term “a slot opening in the housing configured to
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`receive only the shank of an existing key” nor any of the terms included therein. See Dkt. No.
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`146 (Amended Joint Claim Construction Statement). It is Hillman (not KeyMe) who seeks a
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`special meaning for this limitation. In particular, Dr. Phinney has asserted that the limitation is
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`met if
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`. See Exh. 3 (Phinney Tr.) 109:23-110:7). Because Hillman did not seek a
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`construction of this limitation, it should be given its ordinary meaning.
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`This limitation is clearly understood by a person of ordinary skill in the art: It requires a
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`slot opening that receives just the shank and nothing more. Schonfeld Dec. ¶ 49. This ordinary
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`meaning is reflected in the layperson’s understanding of the word “only.” See, e.g., Exh. 8
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`(Merriam-Webster Definition of “only” as “solely, exclusively”).
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`.
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`The ’474 patent describes only two portions of a key blade (shown in Figure 2A)—the
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`shank 18 and the other portions of the key blade described as the “head portion 16.” Undisputed
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`Facts 4-7. The patent makes clear that the shoulder, an example of which is shown as “square
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`shaped base end 22” in Figure 2A of the patent, is not part of the shank. See id.
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`8
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`Although Dr. Phinney acknowledges that
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`’474 patent somehow supports the idea that
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`(Phinney Opening Rpt.) at ¶ 159:
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`, he suggests that a passage from the
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` Exh. 5
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`After the shank of the existing key is inserted into identification
`module 102, imaging system 112 may be triggered to capture one
`or more images of only the shank of the existing key. The images,
`as described above, may include a backlight image, one or more
`sidelight images, and a laser scan image. These images may show
`a location of the tip of the key, a profile of the shank, and a
`location of shoulders at a base of the key's head (if shoulders are
`present).
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`Exh. 2 (’474 patent) at col. 19:51-59 (emphasis added). But this excerpt from the specification is
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`wholly consistent with the ordinary meaning of “receive only the shank,” and does not support
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`Hillman’s and Dr. Phinney’s special meaning for this limitation. As discussed above, Figure 2A
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`of the patent makes clear that the square shaped base end 22 (i.e., shoulder) starts where the
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`shank 18 ends. This passage describes images of “only the shank” and that “these images may
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`show … a location of shoulders at a base of the key’s head (if shoulders are present).” Id.
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`(emphasis added). The passage does not recite the images showing the shoulders themselves.
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`Determining a location of shoulders is possible because the shoulders (if present) necessarily
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`start where the shank ends. See Undisputed Facts 5-8. In other words, if the slot receives only
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`the shank of a key, the location of shoulders (if they exist) can be inferred from the image of only
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`the shank, as described above in the excerpt from the specification. Schonfeld Dec. ¶¶ 57-58.
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`Because the shoulders “function as end stops for head,” they would lie directly outside a slot
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`entry designed to receive only the shank of the key and thus outside the image. Id.; Exh. 2 (’474
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`patent) at col. 4:57-62; see also id. at 15:29-44, Fig. 11B (describing process to engage “shank
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`9
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`Case 2:19-cv-00209-JRG Document 174 Filed 09/02/20 Page 14 of 22 PageID #: 7708
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`18 (referring to FIG. 2A) and mechanically push shank 18 into alignment” along with “features
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`187 configured to engage base end 22 and/or shoulders 40 of head portion 16 when the key blank
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`is completely inserted.”).
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`Furthermore, to the extent that Hillman is correct that the passage at column 19:51-59
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`describes an embodiment where a slot opening receives the shoulder in addition to the shank (it
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`does not), this embodiment stands unclaimed—the ordinary meaning cannot and should not be
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`subverted for the sake of covering all embodiments. See TIP Sys., LLC v. Phillips &
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`Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed. Cir. 2008).
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`B.
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`KeyMe Does Not Literally Infringe The Asserted Claims Of The ’474 Patent
`As A Matter Of Law
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`The asserted claims of the ’474 patent each require a key making machine that includes
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`“a slot opening in the housing configured to receive only the shank of an existing key.” In order
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`to prevail in proving infringement, Hillman must show that every limitation of the asserted
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`claims is met by the accused kiosks.
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`Although Hillman’s expert—Dr. Phinney—accuses the slot opening in KeyMe’s kiosks
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`of literally infringing this limitation, Exh. 5 (Phinney Opening Rpt.) ¶ 157, he acknowledged
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`Exh. 3 (Phinney Tr.) at 124:23-25:16 (emphasis added), Exh. 245, 256 (shown below); see also
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`Exh. 5 (Phinney Opening Rpt.) ¶ 141-42, 144.
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`Case 2:19-cv-00209-JRG Document 174 Filed 09/02/20 Page 15 of 22 PageID #: 7709
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`Demonstrative Exhibit 245
`Demonstrative Exhibit 246
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`This configuration of the accused products goes far beyond allowing a small insignificant
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`portion of the shoulder to be received, as Hilhnan might suggest. As shown in Figure 24 of Dr.
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`Plliflfley’s eXpeft report,
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`the accused products—
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`—The accused kiosks do not meet this critical limitation of
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`every asserted claim. As a result, Hillman has failed to establish literal infringement of the
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`asserted claims of the ’474 patent, and summary judgment of no literal infringement is
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`warranted. PSN, 525 F.3d at 1167-68.
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`C.
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`KeyMe Does Not Infringe The Asserted Claims Of The ’474 Patent Under
`The Doctrine Of Equivalents As A Matter Of Law
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`Recognizing the gaping hole in its infringement theory with respect to this limitation,
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`Hillman alternatively claims that KeyMe’s accused products nevertheless satisfy this limitation
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`under the doctrine of equivalents.
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` Exh. 5
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`(Phinney Opening Rpt.) ¶ 160.1 This doctrine of equivalents argument fails as a matter of law.
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`Under the doctrine of equivalents, “a product or process that does not literally infringe
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`upon the express terms of a patent claim may nonetheless be found to infringe if there is
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`‘equivalence’ between the elements of the accused product or process and the claimed elements
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`of the patented invention.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21
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`(1997). A showing of equivalence requires that there must be only “insubstantial differences”
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`between the missing claim limitation and corresponding aspects of the accused device. Zodiac
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`Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F.3d 1408, 1415 (Fed. Cir. 2000). The Supreme
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`Court has cautioned that “[i]t is important to ensure that the application of the doctrine, even as
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`to an individual element, is not allowed such broad play as to effectively eliminate that element
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`in its entirety.” Id. at 29.
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`1 This paragraph contains the entirety of Dr. Phinney’s doctrine of equivalents opinion for this
`limitation. Hillman has not otherwise provided any substantive basis for its doctrine of
`equivalents argument.
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`12
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`Case 2:19-cv-00209-JRG Document 174 Filed 09/02/20 Page 17 of 22 PageID #: 7711
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`In applying the doctrine of equivalents courts recognize that “a particular structure can be
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`deemed outside the reach of the doctrine of equivalents because that structure is clearly excluded
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`from the claims whether the exclusion is express or implied.” SciMed Life Sys., Inc. v. Advanced
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`Cardiovascular Sys., Inc., 242 F.3d 1337, 1345 (Fed. Cir. 2001). Under this “specific exclusion”
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`principle, the doctrine of equivalents cannot be used to broaden a claim to “encompass a
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`structural feature that is the opposite of, or inconsistent with, the recited limitation.” Augme
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`Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1335 (Fed. Cir. 2014); Dolly, Inc. v. Spalding &
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`Evenflo Companies, Inc., 16 F.3d 394, 400 (Fed. Cir. 1994) (“[T]he concept of equivalency
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`cannot embrace a structure that is specifically excluded from the scope of the claims.”). Whether
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`a purported equivalent is specifically excluded from a recited limitation is a question of
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`law. See Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003).
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`In Zodiac Pool Care v. Hoffinger Industries, the Federal Circuit rejected a doctrine of
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`equivalents argument much like the one Hillman presents here. See Zodiac Pool Care, 206 F.3d
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`at 1415-16. The claims at issue in Zodiac involved “a flexible disc” with a “peripheral edge” and
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`“a stop for preventing upward flexing of the peripheral edge beyond a predetermined amount
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`located forward of the body and above and substantially inward of the peripheral edge.” Id. at
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`1411 (emphasis added). As an alternative to literal infringement, the patentee argued that this
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`limitation could be satisfied under the doctrine of equivalents by a stop which “extends to the
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`peripheral edge” of a disc instead of one located “substantially inward of the peripheral edge”
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`of the disc. Id. at 1416. In dismissing the patentee’s proposed doctrine of equivalents arguments
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`and granting summary judgment of non-infringement, the Federal Circuit emphasized the claim
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`limitation contained “‘clear structural limitations,’ including a limitation that the stop be located
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`‘substantially inward’ of the peripheral edge of the disc.” Id. In light of this clear language, the
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`Case 2:19-cv-00209-JRG Document 174 Filed 09/02/20 Page 18 of 22 PageID #: 7712
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`court held that “a verdict of infringement under the DOE would reduce the claims to nothing
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`more than functional abstracts, devoid of meaningful structural limitations on which the public
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`could rely.” Id. (internal citations omitted).
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`Similarly, in MorphoSys v. Janssen Biotech, a patentee argued that a claim limitation
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`limited solely to “human” antibodies could nevertheless be satisfied by a product employing
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`“humanized” antibodies, even though the patentee acknowledged “that a human antibody cannot
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`also be a humanized antibody (and vice versa).” MorphoSys AG v. Janssen Biotech, Inc., 358 F.
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`Supp. 3d 354, 363 (D. Del. 2019). The court applied the specific exclusion principle, rejecting
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`the patentee’s argument on the grounds that using a human antibody was mutually exclusive with
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`using a humanized antibody and the two were thus “inconsistent with each other.” Id.
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`Consequently, the court granted summary judgment of non-infringement under the doctrine of
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`equivalents. Id.2
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`Here, Hillman and Dr. Phinney’s conclusory doctrine of equivalents argument improperly
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`eliminates the ’474 patent’s requirement of a slot entry “configured to receive only the shank of
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`an existing key,” effectively rewriting the claim to allow the shoulders of a key—i.e., “more
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`2 Claim vitiation has been used as another bar to a finding of infringement under the doctrine of
`equivalents. “[S]aying that a claim element would be vitiated is akin to saying that there is no
`equivalent to the claim element in the accused device based on the well-established ‘function-
`way-result’ or ‘insubstantial differences’ tests.” Brilliant Instruments, Inc. v. GuideTech,
`LLC, 707 F.3d 1342, 1347 (Fed. Cir. 2013). The Federal Circuit has described vitiation as “a
`legal conclusion of a lack of equivalence based on the evidence presented and the theory of
`equivalence asserted.” UCB, Inc. v. Watson Labs., Inc., 927 F.3d 1272, 1283 (Fed. Cir.
`2019); see also DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1017 (Fed.
`Cir. 2006) (“[T]he ‘all elements’ rule generally is not met—and therefore a claim limitation can
`be said to be vitiated—if the theory or evidence of equivalence is legally incapable of
`establishing that the differences between the limitation in the claim and the accused device are
`insubstantial; i.e., if the theory or evidence is so legally insufficient as to warrant a holding of
`non-infringement as a matter of law.”).
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`than the shank”—to be received. See Exh. 5 (Phinney Opening Rpt.) at ¶ 160. This is a clear
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`violation of the specific exclusion principle.
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`As in Zodiac and MorphoSys, Hillman’s proposed doctrine of equivalents argument relies
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`on a purported equivalent specifically excluded from and “inconsistent with” the express
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`structural limitation imposed by the “only the shank” language in the ’474 patent’s claims.
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`Receiving “more than the shank” of a key is fundamentally inconsistent with, and renders
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`meaningless, the express requirement of receiving “only the shank” of a key. Under the doctrine
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`of claim vitiation, this application of the doctrine of equivalents is “legally incapable of
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`establishing that the differences between” a slot opening configured to receive only the shank
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`and the accused kiosks that receive more than the shank “are insubstantial.” DePuy, 469 F.3d at
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`1017. Hillman’s doctrine of equivalents argument thus fails as a matter of law. See also Lacks
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`Indus., Inc. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335, 1344 (Fed. Cir. 2003)
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`(affirming summary judgement of non-infringement where claim required that cladding on wheel
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`cover not cover an axial peripheral lip, and the cladding of the accused products covered at least
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`part of the lip, and therefore did not meet the “not cover said axial peripheral lip” limitation);
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`Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1582–83 (Fed. Cir.
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`1996) (affirming summary judgment of no infringement under doctrine of equivalents because
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`claim language construed as requiring at least three distinct values of offsets, and therefore,
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`affirmatively excluded as equivalents an arrangement with only two offsets).
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`Furthermore, Hillman cannot meet its burden at trial to show infringement under the
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`doctrine of equivalents. Hillman’s expert, in applying the doctrine of equivalents provides an
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`inadequate analysis of the function-way-result, identifying a combination of function, way and
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`result that has no relationship to the claim limitation. See Exh. 5 (Phinney Opening Rpt.) ¶ 160;
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`Schonfeld Dec. ¶¶ 62-63. For example, Dr. Phinney identifies the way as
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`. See Exh. 5 (Phinney Opening Rpt.) ¶160. It appears that Dr.
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`Phinney is simply invoking the function-way-result test in a conclusory fashion, rather than
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`actually analyzing the claim limitation and the accused products to determine whether
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`differences between the claim limitation and the product are insubstantial as required by the law.
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`See Zodiac Pool Care, 206 F.3d at 1415.
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`Here, despite Hillman’s attempt to show otherwise, the accused KeyMe kiosks do not
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`perform the same or substantially the same function (receiving only the shank of an existing
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`key) in the same or substantially the same way (by preventing other parts of the key, including
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`the shoulders, from entering the housing) to achieve the same or substantially the same result
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`(having only the shank of a key enter the housing so that only the shank is viewable by an
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`imaging system). Schonfeld Dec. ¶¶ 62-63. As described above, KeyMe’s accused products are
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`specifically configured to receive portions of the key extending beyond the shank. Undisputed
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`Facts 9-15.
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`significant differences between the accused features and the claim limitation such that this
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`. Schonfeld Dec. ¶¶ 48, 62. Thus, there are
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`limitation cannot be satisfied under the doctrine of equivalents.
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`VI. CONCLUSION
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`For the foregoing reasons, KeyMe respectfully requests the Court grant summary
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`judgment of non-infringement as to the asserted claims of the ’474 patent.
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`Case 2:19-cv-00209-JRG Document 174 Filed 09/02/20 Page 21 of 22 PageID #: 7715
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`DATED: August 31, 2020
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`By /s/ Sean S. Pak
`Deron R. Dacus (Bar No. 00790553)
`The Dacus Firm, PC
`821 ESE Loop 323
`Suite 430
`Tyler, TX 75701
`Tel. 903.705.1177
`Fax 903.581.2543
`ddacus@dacusfirm.com
`
`Sean S. Pak
`Jeffrey W. Nardinelli
`Zachary C. Flood
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111-4788
`Telephone: (415) 875-6600
`Facsimile: (415) 875-6700
`seanpak@quinnemanuel.com
`jeffnardinelli@quinnemanuel.com
`zackflood@quinnemanuel.com
`
`David A. Nelson
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`191 N. Wacker Drive, Suite 2700
`Chicago, IL 60606-1881
`Telephone: (312) 705-7400
`Facsimile: (312) 705-7401
`davenelson@quinnemanuel.com
`
`Eric Hui-chieh Huang
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010-1601
`Telephone: (212) 849-7000
`Facsimile: (212) 849-7100
`erichuang@quinnemanuel.com
`
`Attorneys for Defendant KeyMe, LLC
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`Case 2:19-cv-00209-JRG Document 174 Filed 09/02/20 Page 22 of 22 PageID #: 7716
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who have consented to
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`electronic service are being served with a copy of this document via electronic mail on August
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`31, 2020. I also hereby certify that all counsel of record who have consented to electronic
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`service are being served with a notice of filing of this document, under seal, pursuant to L.R.
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`CV-5(a)(7) on August 31, 2020.
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` /s/ Zachary Flood
`Zachary Flood
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`I hereby certify that the foregoing document and all supporting declarations and exhibits
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`thereto are being filed under seal pursuant to the terms of the Protective Order (Dkt. 94).
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` /s/ Zachary Flood
`Zachary Flood
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`18
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