By John Presper
On December 11, 2013, Tyco Fire & Security GmbH of Switzerland, Sensormatic Electronics, LLC of Boca Raton, Florida (“Sensormatic”), and Tyco Integrated Security, LLC of Boca Raton, Florida (collectively, “Tyco”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that the following entities (collectively, the “Proposed Respondents”) unlawfully import, sell for importation, and/or sell within the U.S. after importation certain acousto-magnetic electronic article surveillance devices that infringe one or more claims of U.S. Patent Nos. 5,729,200 (“the ‘200 patent”) and 6,181,245 (“the ‘245 patent”):

  • Ningbo Signatronic Technologies, Ltd. of China (“Ningbo”)

  • All-Tag Security Americas, Inc. of Boca Raton, Florida

  • All-Tag Security Hong Kong Co. Ltd. of Hong Kong

  • All-Tag Europe SPRL of Belgium

  • All-Tag Security UK, Ltd. of the United Kingdom

  • Best Security Industries of Delray Beach, Florida

  • Signatronic Corporation of Boca Raton, Florida

According to the complaint, the ‘200 and ‘245 patents generally relate to electronic article surveillance systems designed to deter and detect shoplifting.  In general operation, retailers place labels on merchandise and then the cashier at checkout uses a deactivator to deactivate the label.  If the label is not deactivated before the merchandise leaves the store, the label resonates an acousto-magnetic signal that is detected by the pedestals at the retailer’s doors.  The two patents at issue specifically relate to a label that can be deactivated with a low field of energy, but that remains stable and maintains its magnetization so as to avoid unintentional deactivation.

In the complaint, Tyco states that the Proposed Respondents import, sell for importation, and/or sell within the U.S. after importation “compatible” labels that are designed solely for use with Sensormatic’s acousto-magnetic EAS systems.  The complaint specifically refers to Ningbo’s “AM label T3,” “AM label T2,” “AM label K3,” “AM label K2,” “AM Roll Label Rk2,” and “AM label H3” as infringing products.

Regarding domestic industry, Tyco states that its AM EAS labels practice claim 1 of the ‘200 patent and claim 1 of the ‘245 patent.  Tyco also states that its domestic activities in connection with the AM EAS labels include significant employment of labor or capital and substantial investment in exploitation of the patents, including engineering research and development, and licensing relating to products employing the ‘200 and ‘245 patents.  Further, Tyco asserts that its domestic industry activities include products in the AM EAS system such as AM EAS UltraMax detection systems and label deactivators.

As to related litigation, Tyco states that the ‘200 and ‘245 patents were involved in an action filed by Sensormatic in the Southern District of Florida alleging infringement by Tag Company US LLC and Phenix Label Company.  The district court found the patents valid and enforceable, and infringed by the defendants.  The Federal Circuit affirmed.  Additionally, the validity of the ‘200 and ‘245 patents was confirmed after reexamination procedures where (1) 42 of the 47 claims of the ‘200 patent were confirmed, two were cancelled, and three were amended; and (2) 16 of the 19 claims of the ‘245 patent were confirmed, one was cancelled, and two were amended.  Tyco also contemporaneously filed suit in the Southern District of Florida asserting infringement of the ‘200 and ‘245 patents.  Further, Tyco has filed patent infringement suits in China against Ningbo for infringement of Chinese Patent ZL97197519.1, and in Germany against UG & Co. KG Security Products for infringement of European Patent No. 0922274.

With respect to potential remedy, Tyco requests that the Commission issue a general exclusion order and permanent cease and desist orders directed at Proposed Respondents.