DCT
3:24-cv-02717
Graphite Charging Co LLC v. Tesla Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Graphite Charging Company LLC (New York)
- Defendant: Tesla, Inc. (Delaware)
- Plaintiff’s Counsel: Folio Law Group PLLC; Goldberg Segalla LLP
- Case Identification: 3:24-cv-02717, W.D. Tex., 08/04/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant is headquartered in Austin, maintains a regular and established place of business in the district, and operates a factory where it allegedly manufactures infringing products.
- Core Dispute: Plaintiff alleges that Defendant’s electric vehicle charging products, vehicles, mobile application, and energy optimization software infringe two patents related to managing EV charging interruptions and adapting power consumption based on grid conditions.
- Technical Context: The technology at issue involves intelligent management of electric vehicle charging and grid-responsive energy consumption, core areas of innovation in the growing electric vehicle and smart grid markets.
- Key Procedural History: The patents-in-suit were originally assigned to International Business Machines Corporation (IBM) and subsequently assigned to Plaintiff. The complaint alleges that Plaintiff provided Defendant with pre-suit notice of the patents-in-suit via a letter.
Case Timeline
| Date | Event |
|---|---|
| 2008-08-19 | '391 Patent Priority Date |
| 2008-10-24 | '243 Patent Priority Date |
| 2012-01-24 | '391 Patent Issue Date |
| 2012-10-16 | '243 Patent Issue Date |
| 2023-08-04 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,103,391 - “System for Detecting Interrupt Conditions During an Electric Vehicle Charging Process,” issued January 24, 2012
The Invention Explained
- Problem Addressed: The patent’s background section notes that as electric vehicle charging evolved beyond simple scenarios like plugging into a home outlet, a more sophisticated infrastructure was needed to manage complex charging "transactions" at public or third-party stations (’391 Patent, col. 6:57-67, 7:1-5).
- The Patented Solution: The invention describes a system for managing an EV charging process by actively monitoring it for a set of predefined "interrupt conditions." These conditions can include device capability issues (e.g., component overheating), preference violations (e.g., exceeding a user-set price for electricity), or data service interruptions (’391 Patent, Abstract; col. 10:35-40). Upon detecting such a condition, the system sends a response to an "energy transaction execution engine" to terminate the charging process, thereby providing a more robust and controllable charging framework (’391 Patent, col. 9:12-20). The architecture is depicted in Figure 3, which illustrates various services interacting through a central bus (’391 Patent, Fig. 3).
- Technical Importance: This approach provided a framework for a more flexible and interoperable system to govern the entire charging process, an improvement over prior art that the complaint alleges was focused on rudimentary scenarios (Compl. ¶¶28, 37).
Key Claims at a Glance
- The complaint asserts claims 1-20 and provides a detailed analysis of independent claim 8 (Compl. ¶¶81, 83).
- Essential elements of independent claim 8 (a computer program product) include:
- A tangible computer-recordable storage medium.
- First program instructions to monitor operational parameters for interruptions, in response to receiving a start request from an "energy transaction execution engine."
- Second program instructions to detect interruptions that conform to predefined conditions, such as a device capabilities, preference, or data services interruption.
- Third program instructions to send a response to the "energy transaction execution engine" to terminate the process.
- The instructions being stored on the tangible medium.
- The complaint reserves the right to assert additional claims (Compl. ¶81).
U.S. Patent No. 8,291,243 - “Adaptive Computing Responsive to Environmental Conditions,” issued October 16, 2012
The Invention Explained
- Problem Addressed: The patent describes prior art power-saving techniques for computers as being purely "localized," reacting only to factors like processor idle time or internal temperature. It posits that these mechanisms were not responsive to "larger contextual conditions" such as the overall demand on the power grid, the cost of power, or its source (’243 Patent, col. 1:36-49).
- The Patented Solution: The invention discloses a system that adapts a computational device's power consumption based on external grid conditions. It does so by acquiring "operating environmental condition data" (e.g., spot price of electricity, weather data), analyzing it to determine if there is an indication of high power demand, and if so, causing the device to automatically reduce its power consumption (’243 Patent, Abstract; col. 2:56-67). This solution links the power usage of individual devices to the stability and efficiency of the broader power grid (’243 Patent, col. 4:25-31).
- Technical Importance: This technology introduced the idea of distributed and coordinated control over power grid demand, allowing computational devices to collectively contribute to grid stability and efficiency by responding to global, rather than just local, conditions (Compl. ¶¶53, 56).
Key Claims at a Glance
- The complaint asserts claims 1-20 and provides a detailed analysis of independent claim 15 (Compl. ¶¶104, 106).
- Essential elements of independent claim 15 (an article of manufacture) include instructions that cause a computer system to:
- Acquire "operating environmental condition data" relevant to power generation in a grid system from a feed input.
- Analyze this data to determine an "indication of a high demand for electric power."
- Cause a computational device to "automatically reduce a current amount of consumption of electric power" if a high demand indication is determined.
- The complaint reserves the right to assert additional claims (Compl. ¶¶104, 120).
III. The Accused Instrumentality
Product Identification
The complaint accuses two distinct sets of products. For the ’391 Patent, the accused instrumentalities are Tesla’s EV Charging Stations (including Superchargers, Destination Chargers, and Wall Connectors), Tesla electric vehicles, and the Tesla App (Compl. ¶61). For the ’243 Patent, the accused instrumentality is Tesla’s Suite of Optimization Software Solutions, referred to as Autonomous Control, which includes products like Powerhub, Powerwall, Autobidder, and Microgrid Controller (Compl. ¶68).
Functionality and Market Context
- The complaint alleges that the accused charging stations, vehicles, and app work as an integrated system to manage the EV charging process. This system allegedly uses "real time interrupt handling for fault conditions and user preference conditions" that infringe the ’391 Patent (Compl. ¶63). A Tesla support page illustrates how different colors of the vehicle's charge port light indicate the charging status, including interruptions (Compl. ¶90).
- Autonomous Control is described as an "advanced ecosystem of software" that uses machine learning, forecasting, and real-time algorithms to manage energy assets for purposes such as utility bill reduction, demand response, and microgrid control (Compl. ¶69). The complaint alleges this software infringes the ’243 Patent by adapting power consumption in response to environmental conditions to "maximize economic value" (Compl. ¶¶70-71). The complaint provides an image of the "Powerhub Interface," which displays real-time power data from various sources like the grid, solar, and battery storage (Compl. ¶108, p. 26).
IV. Analysis of Infringement Allegations
’391 Patent Infringement Allegations
| Claim Element (from Independent Claim 8) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a computer program product for managing a charging process of an electric vehicle, the computer program product comprising: a tangible computer-recordable storage medium; | Tesla’s Charging Stations contain a "control compartment with various computer boards" which are physical devices that store the computer programs for managing charging. | ¶84 | col. 5:21-25 |
| first program instructions to monitor a set of operational parameters ... in response to receiving, from an energy transaction execution engine, a request signaling a start of the charging process; | The system's "monitoring firmware" allegedly receives a request from its "control firmware" (the alleged "energy transaction execution engine") to begin monitoring when a vehicle is connected and requests a charge. | ¶¶85-87 | col. 12:1-5 |
| second program instructions to detect the one or more interruptions ... which conform to a set of pre defined interrupt conditions, wherein the one or more interruptions comprise at least one of a device capabilities interruption, a preference interruption, and a data services interruption; | The Charging Stations allegedly detect "fault conditions" (e.g., battery malfunction, over-temperature) which are device capabilities interruptions, and "preference conditions" (e.g., dynamic load management configurations). Data service interruptions are also alleged. | ¶¶88-89 | col. 10:45-50 |
| third program instructions to send a response to the energy transaction execution engine to terminate the charging process in response to detecting the one or more interruptions; | The "monitoring firmware" is alleged to send a response to the "control firmware" when a fault or preference condition occurs, which in turn stops the charging process. | ¶90 | col. 12:9-14 |
Identified Points of Contention
- Scope Question: A central issue may be whether Tesla's internal software components, described as "monitoring firmware" and "control firmware," meet the claim limitation of an "energy transaction execution engine." The defense may argue that the patent's specification, particularly Figure 3 and its discussion of a "transaction broker," contemplates a more complex, multi-party transactional entity rather than integrated firmware within a single vendor's product ecosystem (Compl. ¶86; ’391 Patent, Fig. 3, col. 9:26-33).
’243 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An article of manufacture, comprising: a computer readable tangible storage medium having computer readable program code embodied therewith... | Tesla's Autonomous Control is an "advanced ecosystem of software" whose program code is manufactured and stored on a computer readable tangible storage medium. | ¶107 | col. 2:7-11 |
| acquire operating environmental condition data relevant to the generation of electric power in a power grid system from an operating environment feed input; | Autonomous Control, via its Powerhub platform, allegedly "acquires various energy source loads" and manages energy assets (solar, storage, generators), which the complaint equates to acquiring relevant environmental data. The Powerhub Interface visual shows acquisition of real-time power data. | ¶¶108, p. 26 | col. 2:60-62 |
| analyze the operating environmental condition data to determine an indication of a high demand for electric power from the power grid system; | Autonomous Control allegedly "analyzes and provides performance metrics" and uses its Opticaster optimization engine to "forecasts and optimizes energy in real-time based on operating environmental conditions" to determine demand. | ¶109 | col. 3:1-5 |
| cause a computational device to automatically reduce a current amount of consumption of electric power from the power grid system... if the analyzing determines the high electric power demand indication. | The Microgrid Controller feature allegedly uses a "cost based optimization algorithm" to "automatically either dispatches or curtails generators and sheds or reconnects loads" to operate cost-effectively, thus reducing consumption. | ¶110 | col. 3:15-18 |
Identified Points of Contention
- Technical and Scope Question: The infringement analysis may turn on whether the data Tesla's Autonomous Control uses (e.g., internal "energy source loads," asset status) qualifies as "operating environmental condition data" under the patent's terms. The complaint alleges it does (Compl. ¶108), but the patent specification provides examples focused on external factors like "spot price of electricity," "weather conditions," and the status of third-party power plants, raising the question of a potential mismatch in technical scope (’243 Patent, col. 4:56-62).
V. Key Claim Terms for Construction
'391 Patent
- The Term: "energy transaction execution engine"
- Context and Importance: This term is the central component that receives start requests and termination responses. Plaintiff's infringement theory depends on construing this term to read on the alleged "control firmware" within Tesla's own system (Compl. ¶86). Practitioners may focus on this term because its construction will determine whether the claim applies to a vertically integrated system or is limited to a multi-party transactional environment.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term is not explicitly defined with structural limitations. The specification describes its function as monitoring the "health and safety of charging process" and executing the process, which could arguably be performed by internal firmware (’391 Patent, col. 9:6-9).
- Evidence for a Narrower Interpretation: The patent's architecture in Figure 3 depicts the "energy transaction execution engine" (316) as a distinct module that interacts with a separate "energy transaction broker" (314) and "energy transaction planner" (310), suggesting it is a component in a broader, multi-entity system, not just internal control logic (’391 Patent, Fig. 3).
'243 Patent
- The Term: "operating environmental condition data"
- Context and Importance: The viability of the infringement claim against Autonomous Control hinges on the scope of this term. Plaintiff alleges that data on local energy assets like solar and batteries constitutes "environmental" data (Compl. ¶108). Practitioners may focus on this term because the case depends on whether it is limited to external, ambient conditions or can include the operational state of a local microgrid.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states its goal is to adapt to "local and global demands on a power grid" (’243 Patent, col. 2:58-59). This language could support an interpretation where data about local energy assets contributing to the grid qualifies as relevant "local" data.
- Evidence for a Narrower Interpretation: The specification consistently provides examples of data that are external to the computational device and its immediate power system, such as "spot price of electricity," "rate of change of price of electricity," "weather conditions," and "census data" associated with energy use (’243 Patent, col. 4:56-62). This could support a narrower construction limited to such external, ambient information.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for both patents. The inducement claims are based on allegations that Tesla provides its products to the public along with instructions, marketing, and product specifications that encourage infringing use (Compl. ¶¶81, 96-97, 104, 117). The contributory infringement claims are based on allegations that the accused products are especially made or adapted for infringing use and are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶¶98, 118).
- Willful Infringement: While the complaint does not explicitly use the word "willful," it lays the groundwork for such a claim by alleging pre-suit knowledge. The complaint states that Tesla had actual knowledge of the patents at least as of its receipt of a notice letter and, separately, through its "monitoring of patents through their ordinary course of business" (Compl. ¶¶73-74, 77, 95).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "energy transaction execution engine," depicted in the ’391 Patent as part of a multi-component transactional framework, be construed to cover the alleged internal "control firmware" within Tesla’s vertically integrated charging system?
- A second key issue will be one of technical interpretation: does the ’243 Patent’s requirement for "operating environmental condition data" encompass the internal operational data of a local microgrid, as allegedly used by Tesla's Autonomous Control, or is the term limited to the patent's examples of external data like weather and grid-wide electricity prices?
- Finally, a central evidentiary question will be what discovery reveals about the actual operation of Tesla’s software, specifically the precise data inputs its Autonomous Control algorithms use and the exact interaction between the software modules that allegedly constitute the "energy transaction execution engine."