Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 1 of 54 PageID #: 908
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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` C.A. No. 2:19-cv-00209-JRG
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`JURY TRIAL DEMANDED
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`THE HILLMAN GROUP, INC.,
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`KEYME, LLC,
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`Plaintiff,
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`v.
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`Defendant.
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`FIRST AMENDED COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff The Hillman Group, Inc. (“Hillman”), files this complaint for patent
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`infringement against Defendant KeyMe, LLC (“KeyMe”) under 35 U.S.C. § 271. Hillman
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`hereby alleges as follows:
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`PARTIES
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`1.
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`Plaintiff Hillman is a corporation organized and existing under the laws of
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`Delaware that maintains its principal place of business at 10590 Hamilton Avenue, Cincinnati,
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`Ohio 45231.
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`2.
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`Hillman is engaged in the business of providing a variety of products and services
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`for the retail industry, with a focus on the hardware and home improvement businesses.
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`Hillman’s products include a variety of key duplication machines, including its FastKey, Minute
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`Key, and KeyKrafter key duplication machines. Hillman deploys its key duplication machines in
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`this judicial district and throughout the United States.
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 2 of 54 PageID #: 909
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`On information and belief, Defendant KeyMe is a corporation organized and
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`3.
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`existing under the laws of Delaware that maintains its principal place of business at 5 Penn
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`Plaza, New York, New York 10001.
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`4.
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`On information and belief, KeyMe provides self-service key duplication kiosks to
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`the retail industry and regularly conducts business throughout the United States, including within
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`this judicial district, by placing these kiosks in retail locations. On information and belief,
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`KeyMe derives revenue from the sale of the keys duplicated in the KeyMe kiosks to consumers.
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`JURISDICTION AND VENUE
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`5.
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`6.
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`Hillman realleges, and incorporates in full herein, each preceding paragraph.
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`This action arises under the patent laws of the United States, 35 U.S.C. §§ 100, et
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`seq., including 35 U.S.C. § 271, and this Court has jurisdiction over the subject matter of this
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`action under 28 U.S.C. §§ 1331 and 1338(a).
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`7.
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`This Court has personal jurisdiction over KeyMe because, on information and
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`belief, KeyMe purposely avails itself of the privilege of doing business in the Eastern District of
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`Texas and/or derives substantial revenue from goods and services provided to individuals in this
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`district, including via the deployment of KeyMe key duplication kiosks.
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`8.
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`On information and belief, KeyMe has deployed approximately thirty of its
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`infringing KeyMe kiosks in this judicial district. See D.I. 12-1 at 4.
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`9.
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`Venue is proper in this judicial district under 28 U.S.C. §§ 1391 and/or 1400(b)
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`because, on information and belief, KeyMe has committed acts of patent infringement within the
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`Eastern District of Texas and has multiple regular and established places of business in this
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`district by way of its thirty or more key duplication kiosks in this district.
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 3 of 54 PageID #: 910
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`10. More than one hundred Hillman FastKey, Minute Key, and KeyKrafter key
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`duplication machines are deployed in the Eastern District of Texas.
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`11.
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`Hillman also maintains three manufacturing and distribution facilities located
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`within the Eastern District of Texas, totaling more than 334,000 square feet of commercial real
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`estate.
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`12.
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`Hillman operates a 165,705 square foot distribution facility at 514 Bennett Lane,
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`Lewisville, Texas, within the Eastern District of Texas. Hillman employs over 110 people at the
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`Lewisville facility, which is Hillman’s only U.S. distribution center located between Arizona and
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`Ohio.
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`13.
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`Hillman has leased the Lewisville facility since December of 2017, and has a
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`valid lease on the property through at least May of 2025. More than two million products
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`relating to Hillman’s key duplication business touched the Lewisville facility in the twelve
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`months ending in August, 2019, representing tens of millions of dollars in eventual sales.
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`14.
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` Hillman additionally maintains two facilities in Tyler, Texas, within the Eastern
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`District of Texas. Hillman operates a 105,259 square foot manufacturing, storage, and
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`distribution facility located at 2329 East Commerce Street, Tyler, Texas 75702, and a 63,000
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`square foot office, manufacturing, storage, and distribution facility located at 6357 Reynolds
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`Road, Tyler, Texas 75708. Hillman has operated the two Tyler facilities since November of
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`2017, and has a valid lease on each property through at least November of 2022, with options to
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`renew for at least ten additional years. Hillman employs approximately 180 people combined at
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`its two Tyler facilities.
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`THE PATENTS-IN-SUIT
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`15.
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`Hillman realleges, and incorporates in full herein, each preceding paragraph.
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 4 of 54 PageID #: 911
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`The U.S. Patent and Trademark Office (“PTO”) issued U.S. Patent No. 8,979,446
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`16.
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`(“the ’446 patent”) on March 17, 2015, entitled “Fully Automatic Self-Service Key Duplicating
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`Kiosk.” The ’446 patent identifies Daniel Freeman as the inventor of the claimed subject matter.
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`A true and correct copy of the ’446 patent is attached hereto as Exhibit A.
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`17.
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`Hillman is the owner of the ’446 patent by virtue of assignment and has the right
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`to enforce it.
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`18.
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`The PTO issued U.S. Patent No. 9,914,179 (“the ’179 patent”) on March 13,
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`2018, entitled “Self Service Key Duplicating Machine with Automatic Key Model Identification
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`System.” The ’179 patent identifies Daniel Freeman and Ari Freeman as the inventors of the
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`claimed subject matter. A true and correct copy of the ’179 patent is attached hereto as
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`Exhibit B.
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`19.
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`Hillman is the owner of the ’179 patent by virtue of assignment and has the right
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`to enforce it.
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`20.
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`The PTO issued U.S. Patent No. 10,400,474 (“the ’474 patent”) on September 3,
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`2019, entitled “Identification Module for Key Making Machine.” The ’474 patent identifies
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`Byron Keith Grice, Phillip Gerlings, John Clayton Campbell, and Michael James Schmidt as the
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`inventors of the claimed subject matter. A true and correct copy of the ’474 patent is attached
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`hereto as Exhibit C.
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`21.
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`Hillman is the owner of the ’474 patent by virtue of assignment and has the right
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`to enforce it.
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`THE INFRINGING PRODUCTS
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`22.
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`Hillman realleges, and incorporates in full herein, each preceding paragraph.
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 5 of 54 PageID #: 912
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`On information and belief, KeyMe markets a self-service key duplicating kiosk
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`23.
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`that it has introduced into interstate commerce under one or more trade names, including but not
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`limited to the “KeyMe” or “Locksmith in a Box” kiosks (collectively, “the Infringing Products”).
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`Attached to this Complaint as Exhibit D is a printout of a KeyMe website
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`(https://blog.key.me/key-copying-kiosk-technology-update/; last visited May 31, 2019), showing
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`examples of the Infringing Products.
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`24.
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`On information and belief, KeyMe has marketed, sold, offered for sale, and/or
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`provided the Infringing Products to various retailers throughout the United States and this
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`judicial district, including but not limited to 7-Eleven, Bed Bath & Beyond, Rite Aid,
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`Albertson’s, Kmart, Safeway, Sears, Mall of America, Giant Eagle, Ralphs, Kroger, Vons, and
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`Tom Thumb, and is continuing to do so. Attached to this Complaint as Exhibit E is a printout of
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`a KeyMe website (https://www.key.me; last visited May 19, 2019) instructing consumers to
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`“find us at these fine retailers.”
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`KEYME’S INFRINGEMENT OF THE ’446 PATENT
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`25.
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`26.
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`Hillman realleges, and incorporates in full herein, each preceding paragraph.
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`KeyMe, via the Infringing Products, has infringed, infringes, and will infringe
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`multiple claims of the ’446 patent, including at least claim 22.
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`27.
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`The ’446 patent is directed generally to “self-service kiosk[s] for duplicating
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`keys.” See Exhibit A at col. 21, l. 10 – col. 30, l. 53.
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`28.
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`The ’446 patent was previously asserted against KeyMe by the former owner of
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`the ’446 patent, Minute Key, Inc., in a litigation captioned Minute Key, Inc. v. KeyMe, Inc.,
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`Civil Action No. 0:15-cv-01599-JNE-KMM, in the United States District Court for the District
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`of Minnesota (“the Minnesota Action”). KeyMe was served with the complaint in the Minnesota
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 6 of 54 PageID #: 913
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`Action on March 30, 2015. See Exhibit F (returned summons in the Minnesota Action
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`indicating service by Minute Key on KeyMe’s Delaware agent).
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`29.
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`The parties to the Minnesota Action filed a stipulation of voluntary dismissal for
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`all claims and defenses in the Minnesota Action on February 24, 2017. See Exhibit G (copy of
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`joint stipulation). The Minnesota court dismissed the Minnesota Action without prejudice on
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`March 2, 2017, in an order filed on the record on March 3, 2017. Exhibit H (copy of dismissal
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`order). No determination was made regarding the validity or enforceability of the ’446 patent, or
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`the infringement of any claim of the ’446 patent by KeyMe during the Minnesota Action.
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`30.
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`During the pendency of the Minnesota Action, Hillman filed an inter partes
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`review (“IPR”) petition with the PTO’s Patent Trial and Appeal Board (“PTAB”) seeking
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`invalidation of selected claims of the ’446 patent. The case was assigned control number
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`IPR2015-01154. Hillman’s petition was filed on May 7, 2015. Hillman’s petition sought to
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`invalidate only a portion of the claims of the ’446 patent, on grounds of obviousness in view of
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`the prior art.
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`31.
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`The PTAB instituted review based on Hillman’s IPR petition on November 16,
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`2015. On November 14, 2016, the PTAB issued its final written decision, and found claims 1, 7,
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`8, 11, 12, 15–18, 20, 23–26, 31, 32, 38, 39, 42, 43, 46–49, 51, 54–58, 64, 65, 68, 69, 72, 74, 76,
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`79–84, 90, 91, 94, 95, 98, 100, and 104–108 of the ’446 patent to be unpatentable.
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`32.
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`The PTO officially cancelled claims 1, 7, 8, 11, 12, 15–18, 20, 23–26, 31, 32, 38,
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`39, 42, 43, 46–49, 51, 54–58, 64, 65, 68, 69, 72, 74, 76, 79–84, 90, 91, 94, 95, 98, 100, and 104–
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`108 of the ’446 patent via an “Inter Partes Review Certificate” dated February 20, 2018.
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 7 of 54 PageID #: 914
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`The claims of the ’446 patent that were not at issue in IPR2015-01154, namely
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`33.
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`claims 2–6, 9, 10, 13, 14, 19, 21, 22, 27–30, 33–37, 40, 41, 44, 45, 50, 52, 53, 59–63, 66, 67, 70,
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`71, 73, 75, 77, 78, 85–89, 92, 93, 96, 97, 99, and 101–103 remain valid and enforceable.
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`34.
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`Hillman subsequently acquired Minute Key and became the owner of the
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`’446 patent.
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`35.
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`Claim 22 of the ’446 patent depends from independent claim 1, which means that
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`claim 22 includes all the recitations of claim 1.
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`36.
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`Claim 1 of the ’446 patent recites:
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`A self-service kiosk for duplicating keys, comprising:
`a kiosk housing having a customer interface configure[d] to receive payment from
`a customer for the purchase of at least one duplicate of the customer’s key,
`a key-receiving entry in said housing configured to receive at least a portion of the
`customer’s key to be duplicated, wherein the key-receiving entry blocks insertion of the
`head of an inserted key so that only the blade of an inserted key extends into the kiosk
`housing,
`a key analysis system within said housing configured to analyze the blade of a key
`inserted in said key-receiving entry to determine whether the inserted key matches one of
`a group of preselected key types and, if so, which preselected key type is matched,
`a key blank magazine within said housing configured to store key blanks for each
`of said preselected key types,
`a key blank extraction system configured to extract from said magazine a key
`blank for the preselected key type matched by the blade of said key inserted in said key-
`receiving entry,
`a key duplicating system within said kiosk configured to replicate the tooth
`pattern of the blade of said key inserted in said key-receiving entry, on the blade of said
`extracted key blank, and
`a key-removal exit in said housing providing customer access to the key with the
`replicated tooth pattern for removal from the kiosk.
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`Claim 22 of the ’446 patent recites:
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`37.
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`The self-service kiosk of claim 1 in which said kiosk has a front panel that
`includes a guard adjacent said key-receiving entry to protect the head of a key protruding
`from said entry from accidental contact.
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 8 of 54 PageID #: 915
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`KeyMe has described the Infringing Products as “self-service key copying
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`38.
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`kiosks.” See Exhibit I at 3 (website stating “Find our self-service key copying kiosks in retailers
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`like Bed Bath & Beyond, Rite Aid and 7-Eleven”; https://blog.key.me/24-hour-locksmith-near-
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`you/; last visited May 19, 2019).
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`39.
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`On information and belief, the Infringing Products include a kiosk housing with a
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`customer interface. KeyMe has encouraged customers on its website to “try out KeyMe’s
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`touchscreen today!” See Exhibit J at 3 (https://blog.key.me/how-will-the-touchscreen-evolve-
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`in-2017/; last visited May 19, 2019). On information and belief, the Infringing Products accept
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`payment at the kiosk via the customer interface.
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`40.
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`On information and belief, the Infringing Products include a key-receiving entry
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`in the kiosk housing configured to receive at least a portion of a customer’s key to be duplicated.
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`See Exhibit K at 1 (snapshot of website showing a KeyMe kiosk with a key-receiving entry
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`surrounded by the instruction “INSERT KEY”; https://key.me; last visited May 19, 2019);
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`Exhibit L at 2 (same; https://blog.key.me/how-our-key-copying-machines-learn/; last visited
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`May 19, 2019). On information and belief, the key-receiving entry blocks insertion of the head
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`of an inserted key so that only the blade of the inserted key extends into the kiosk housing.
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`41.
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`On information and belief, the Infringing Products include a key analysis system
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`within the kiosk housing configured to analyze the blade of a key inserted into the key-receiving
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`entry. See id. at 1-2 (“When scanning and digitally decoding your house keys, our kiosks use
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`two primary processes that mirror how the human brain functions – computer vision and neural
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`networks. Our computer vision technology allows the kiosk to scan and recognize your key
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`using multiple cameras in a process very similar to how facial recognition technology identifies a
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`person based on a digital image. Based on preset algorithms, our key duplication kiosk
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 9 of 54 PageID #: 916
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`(http://www.key.me/kiosk) then generates a 3D image of the key’s teeth. When this image is
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`analyzed, the kiosk’s brain comes to life.”).
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`42.
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`On information and belief, the Infringing Products utilize a key analysis system to
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`determine whether the inserted key matches one of a group of preselected key types and, if so,
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`which preselected key type is matched. See id. at 2 (“The key scan is then matched to existing
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`information on various key types that the kiosk has collected.”); see also Exhibit D at 1-2
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`(“While a traditional locksmith crudely trace-cuts a key by sight, KeyMe kiosks can recall
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`hundreds of thousands of scans that came before and call upon these examples to quickly and
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`accurately identify a wider range of keys...”).
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`43.
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`On information and belief, the Infringing Products contain a key blank magazine
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`within the kiosk housing configured to store key blanks for each of the preselected key types,
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`and a key blank extraction system configured to extract from said magazine a key blank for the
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`preselected key type matched by the blade of said key inserted in said key-receiving entry. The
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`Infringing Products must contain a storage magazine for key blanks within the kiosk housing,
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`because the Infringing Products do not require the user to insert a key blank from outside the
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`kiosk housing in order to duplicate a key. See Exhibit D at 2 (describing how at least some of
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`the Infringing Products “autonomously set itself up and start cutting keys without human
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`involvement.”).
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`44.
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`On information and belief, the Infringing Products contain a key duplication
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`system configured to replicate the tooth pattern of the blade of the key inserted into the key-
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`receiving entry on the blade of a key blank extracted from within the system. See Exhibit L at 2
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`(“Based on preset algorithms, our key duplication kiosk (http://www.key.me/kiosk) then
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`generates a 3D image of the key’s teeth.”); Exhibit M at 2 (snapshot of a KeyMe website stating
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 10 of 54 PageID #: 917
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`“If you’re locked out, all you need to do is locate the nearest KeyMe locksmith in a box and cut a
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`duplicate key. Our kiosks are equipped to print most common key types in just a few seconds.”
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`https://blog.key.me/locksmith-in-a-box-protects-you-from-lockouts/; last visited June 3, 2019);
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`see also Exhibit D at 2 (describing how at least some of the Infringing Products “autonomously
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`set itself up and start cutting keys without human involvement.”).
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`45.
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`On information and belief, the Infringing Products contain a key-removal exit in
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`the kiosk housing providing the customer access to the key with the replicated tooth pattern for
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`removal from the kiosk. See Exhibit D at 1 (“Each machine can now track the full-cycle
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`progress of a key as it interfaces with our hardware and robotics and eventually drops into the
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`customer’s hand.”); see id. (photograph of one of the Infringing Products revealing a key-
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`removal exit on the lower left side of the front of the kiosk housing directly above “COPY
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`KEYS”); see also Exhibit N (screenshot of a video posted on KeyMe’s YouTube channel
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`showing a newly-cut key blank being dropped into the key-removal exit in the kiosk housing of
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`one of the Infringing Products; https://www.youtube.com/watch?v=NALboqLcZR8 at 0:14; last
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`visited May 20, 2019).
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`46.
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`On information and belief, the Infringing Products therefore meet each and every
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`limitation of claim 1 of the ’446 patent.
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`47.
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`The Infringing Products include a front panel that contains the key-receiving
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`entry. See Exhibit L at 2 (photograph of one of the Infringing Products showing the key-
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`receiving entry in the center of the panel).
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`48. Within this front panel, on information and belief the Infringing Products contain
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`physical features that constitute a guard to protect the head of a key protruding from the key-
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`receiving entry from accidental contact. See Exhibit O (screenshot of a video posted on
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 11 of 54 PageID #: 918
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`KeyMe’s YouTube channel; https://www.youtube.com/watch?v=NALboqLcZR8 at 0:12; last
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`visited May 20, 2019).
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`49.
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`On information and belief, the Infringing Products therefore meet each and every
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`limitation of at least claim 22 of the ’446 patent, which also contains each and every limitation of
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`claim 1.
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`50.
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`51.
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`KEYME’S INFRINGEMENT OF THE ’179 PATENT
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`Hillman realleges, and incorporates in full herein, each preceding paragraph.
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`KeyMe, via the Infringing Products, has infringed, infringes, and will infringe
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`multiple claims of the ’179 patent, including at least claim 9.
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`52.
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`The ’179 patent is directed generally to “method[s] of duplicating a key” and “key
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`duplication machine[s].” See Exhibit B at col. 17, l. 24 – col. 20, l. 26.
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`53.
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`Claim 9 of the ’179 patent recites:
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`A key duplicating machine comprising:
`a storage housing configured to store key blanks of different cross-sectional
`profiles;
`a blade cross-section detector configured to automatically detect a cross-sectional
`profile of a master key;
`a blank loading system configured to automatically select, from among the
`different stored key blanks, a key blank whose cross-sectional profile matches the
`automatically-detected cross-sectional profile of the master key; and
`a key cutting system configured to cut the selected key blank to duplicate a key
`tooth pattern of the master key.
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`As discussed above, KeyMe has described the Infringing Products as “self-service
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`54.
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`key copying kiosks,” i.e. key duplication machines. See Exhibit I at 3 (website stating “Find our
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`self-service key copying kiosks in retailers like Bed Bath & Beyond, Rite Aid and 7-Eleven”;
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`https://blog.key.me/24-hour-locksmith-near-you/; last visited May 19, 2019).
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 12 of 54 PageID #: 919
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`As discussed above, on information and belief, the Infringing Products contain a
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`55.
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`storage magazine configured to store key blanks of different cross-sectional profiles, and a blank
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`loading system configured to automatically select an appropriate key blank that matches the
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`cross-sectional profile of the master key to be duplicated. The Infringing Products must contain
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`a storage magazine for key blanks within the kiosk housing, because the Infringing Products do
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`not require the user to insert a key blank from outside the kiosk housing in order to duplicate a
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`key. See Exhibit D at 2 (describing how at least some of the Infringing Products “autonomously
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`set itself up and start cutting keys without human involvement.”).
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`56.
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`On information and belief, the Infringing Products contain a blade cross-section
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`detector configured to automatically detect a cross-sectional profile of a master key. KeyMe
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`described its identification technology in a patent application filed on January 4, 2013 which
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`later issued as U.S. Patent No. 8,682,468:
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`More generally, key detector 106 can detect geometric information about a key.
`For example, key detector 106 can detect the dimensions of a key (e.g., length,
`width, height, profile, shoulder shape, etc.) and features of the key. Examples of
`features of the key can include, but are not limited to, a bitting pattern,
`protuberances, dimples, voids, grooves, a milling profile, a milling pattern of the
`key from one or more side views, a milling pattern of the key from a front view
`(e.g., looking from the tip of the key toward the head of the key), etc.
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`Exhibit P at col. 4, ll. 12-21.
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`57.
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`Figure 6 of the KeyMe ’468 patent illustrates KeyMe’s use of a cross-sectional
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`profile of a master key:
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 13 of 54 PageID #: 920
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`Id. at 8 (FIG. 6).
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`58.
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`Figure 12 of the KeyMe ’468 patent provides further evidence that determining
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`the cross-sectional profile of the master key is critical for KeyMe’s identification of an
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`appropriate key blank. Figure 12 depicts KeyMe’s use of the cross-sectional profile to assist its
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`machines in detecting and retrieving a key blank whose cross-sectional profile matches that of
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`the master key:
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 14 of 54 PageID #: 921
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`Id. at 15 (FIG. 12); see also id. at col. 6, ll. 31-37 (“In some embodiments, each magazine can
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`contain an inventory of multiple key types so that the number of magazines does not restrict the
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`number of key types which can be accommodated in a kiosk. An illustrative example is shown in
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`FIG. 12. In this embodiment, a key type detection method (e.g., optical imaging), can be used to
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`identify the location of a given blank type within a magazine.”)
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`59.
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`On information and belief, this subject matter disclosed in KeyMe’s patent
`
`application is embodied within the Infringing Products, and the cross-section detecting features
`
`described in the patent application are available for use as part of the key identification and
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`duplication process. KeyMe has represented in press releases that its key duplication kiosks
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`contain its patented key identification technology. See Exhibit Q at 1 (April 15, 2014 KeyMe
`
`press release stating “Through KeyMe's patented technology, customers can scan keys with their
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 15 of 54 PageID #: 922
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`smartphone and receive perfect duplicates in the mail.”;
`
`http://www.prweb.com/releases/2014/04/prweb11764747.htm/; last visited June 3, 2019);
`
`Exhibit R at 2 (May 2, 2018 KeyMe press release stating “KeyMe kiosks employ a sophisticated
`
`and patented combination of artificial intelligence, computer vision, and robotics, which safely
`
`and effectively eliminate human error in the key duplication process.”;
`
`https://www.prnewswire.com/news-releases/keyme-advances-national-expansion-of-key-
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`duplication-services-300641032.html; last visited June 3, 2019).
`
`60.
`
`On information and belief, KeyMe detects the cross-sectional profile of an
`
`existing key and employs that information during the key identification and duplication
`
`processes, in order to identify the existing key and an appropriate matching key blank. This is
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`further supported by KeyMe’s mobile phone app, which requires the customer to capture
`
`photographs of both sides of the customer’s existing key before submission to the KeyMe
`
`system. See Exhibit S (progressive screen captures from KeyMe’s mobile app during the course
`
`of a key identification task showing prompts to the user to capture one photograph of one side of
`
`the existing key, then instructing the user to flip the existing key over and capture another
`
`photograph of the other side of the key; app last accessed May 19, 2019).
`
`61.
`
`As discussed above, on information and belief, the Infringing Products contain a
`
`key cutting system configured to cut the selected key blank to duplicate a key tooth pattern of the
`
`master key. See Exhibit L at 2 (“Based on preset algorithms, our key duplication kiosk
`
`(http://www.key.me/kiosk) then generates a 3D image of the key’s teeth.”); Exhibit M at 2 (“If
`
`you’re locked out, all you need to do is locate the nearest KeyMe locksmith in a box and cut a
`
`duplicate key. Our kiosks are equipped to print most common key types in just a few seconds.
`
`You can use the KeyMe app to locate the closest kiosk and cut a replica using only your
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 16 of 54 PageID #: 923
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`fingerprint.”); see also Exhibit D at 2 (describing how at least some of the Infringing Products
`
`“autonomously set itself up and start cutting keys without human involvement.”).
`
`62.
`
`On information and belief, the Infringing Products therefore meet each and every
`
`limitation of at least claim 9 of the ’179 patent.
`
`KEYME’S INFRINGEMENT OF THE ’474 PATENT
`
`63.
`
`64.
`
`Hillman realleges, and incorporates in full herein, each preceding paragraph.
`
`KeyMe, via the Infringing Products, has infringed, infringes, and will infringe
`
`multiple claims of the ’474 patent, including at least claims 1, 11, and 20.
`
`65.
`
`The ’474 patent is directed generally to “key making machine[s]” and “system[s]
`
`for duplicating a key.” See Exhibit C at col. 22, line 55 – col. 26, line 25.
`
`66.
`
`Claim 1 of the ’474 patent recites:
`
`A key making machine, comprising:
`a housing;
`an identification system, wherein the identification system includes:
`
`a slot opening in the housing configured to receive only the shank of an
`existing key;
`
`a transponder sensor located at or around the slot opening configured to
`detect the presence of a transponder within the head of the existing key and to
`read a transponder code associated with the detected transponder; and
`
`an imaging system comprising one or more light sources and one or more
`receivers, wherein the imaging system is configured to determine at least one
`feature selected from the group of features consisting of a bitting pattern of the
`existing key and a channel profile of the existing key;
`a fabrication system, wherein the fabrication system is configured to:
`receive a key blank that the identification system has determined to be
`associated with the existing key;
`receive information associated with the determined bitting pattern from
`the identification system; and
`cut the determined bitting pattern into a key blank; and
`a user interface associated with the housing,
`wherein the user interface includes a touch screen, and
`wherein the user interface is configured to provide status information to a
`user regarding a key duplication process.
`
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 17 of 54 PageID #: 924
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`Id. at col. 22, line 55 – col. 23, line 16.
`
`KeyMe has described the Infringing Products as “self-service key copying
`
`67.
`
`
`
`kiosks.” See Exhibit I at 3 (website stating “Find our self-service key copying kiosks in retailers
`
`like Bed Bath & Beyond, Rite Aid and 7-Eleven”; https://blog.key.me/24-hour-locksmith-near-
`
`you/; last visited May 19, 2019).
`
`68.
`
`On information and belief, the Infringing Products include a key-receiving entry
`
`in the kiosk housing configured to receive only the shank of an existing key. See Exhibit K at 1
`
`(snapshot of website showing a KeyMe kiosk with a key-receiving entry surrounded by the
`
`instruction “INSERT KEY”; https://key.me; last visited May 19, 2019); Exhibit L at 2 (same;
`
`https://blog.key.me/how-our-key-copying-machines-learn/; last visited May 19, 2019). On
`
`information and belief, the key-receiving entry is configured to block insertion of the head of an
`
`inserted key, and receives only the shank of an existing key. See Exhibit P (’468 patent) at col.
`
`11, lines 48-50 (“The key scanning slot can allow a user to maintain contact with the handle of
`
`the key at all times in some embodiments. The key scanning slot can permit the key to remain
`
`attached to a keychain (or key ring, or any other key retention device) during key scanning.”)
`
`69.
`
`On information and belief, the Infringing Products include a transponder sensor
`
`located at or around the slot opening configured to detect the presence of a transponder within
`
`the head of the existing key and to read a transponder code associated with the detected
`
`transponder. See Exhibit D at 2 (“Our older key copying kiosks could support a large number of
`
`car keys, however they weren’t able to copy the more advanced keyless ‘fob’ keys found on
`
`more modern cars. Our new kiosks can copy significantly more car keys than ever before, and
`
`can copy these Fob keys as well, for a fraction of the cost of a dealership”; Exhibit T at 1 (“We
`
`have officially launched our next generation ‘locksmith in a box’ key duplication kiosk! These
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`Case 2:19-cv-00209-JRG Document 30 Filed 09/03/19 Page 18 of 54 PageID #: 925
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`
`next generation kiosks are able to copy car keys, both with transponder chips and those without.”
`
`(https://blog.key.me/our-new-locksmith-in-a-box-next-generation-kiosk/; last visited September
`
`1, 2019); Exhibit U at 1 (February 27, 2018 KeyMe press release stating “Once such a key is
`
`inserted into the kiosk, the transponder data is captured and stored along with the key’s
`
`shape…”; https://www.rfidjournal.com/articles/view?17242/; last visited September 1, 2019);
`
`Exhibit V at 1 (October 27, 2014 KeyMe press release stating “The new kiosks will be able to
`
`copy car keys, both with transponder chips and those without”; https://www.twice.com/the-
`
`wire/keyme-rolls-out-next-generation-kiosks-new-functionality-including-car-keys-and-expands-
`
`retail-footprint-54570; last visited September 1, 2019); Exhibit W at 1 (October 26, 2016
`
`KeyMe press release stating “The customer places their current fob against the key slot, allowing
`
`the secure transfer of the transponder ID. KeyMe will code a new transponder, cut a new blade
`
`and ship it to the customer via complementary priority mail with a tracking code.”;
`
`https://www.kioskmarketplace.com/news/keyme-kiosks-copy-car-key-fobs-and-save-digital-
`
`copies-in-the-cloud/; last visited September 1, 2019).
`
`70.
`
`KeyMe desc