DCT

1:20-cv-02604

Karamelion LLC v. Hunter Douglas Window Fashions Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: Karamelion LLC v. Hunter Douglas Window Fashions, Inc. d/b/a Electronic Solutions, Inc., 1:20-cv-02604, D. Colo., 08/27/2020
  • Venue Allegations: Venue is alleged to be proper in the District of Colorado because Defendant’s d/b/a, Electronic Solutions, Inc., has its headquarters in Colorado and has allegedly committed acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Z-Wave enabled motorized window fashion controls and transceivers infringe patents related to wireless remote appliance control systems that use a distributed network of relay units.
  • Technical Context: The technology concerns low-power, short-range wireless mesh networks for controlling distributed devices in buildings, a foundational approach for modern smart home and building automation systems.
  • Key Procedural History: The U.S. Patent No. 6,873,245 is a continuation-in-part of the application that led to U.S. Patent No. 6,275,166. Subsequent to the filing of this complaint, an ex parte reexamination certificate (US 6,275,166 C1) was issued on December 28, 2021, which cancelled all claims (1-17) of the ’166 patent, raising a threshold question about the viability of the infringement count based on that patent.

Case Timeline

Date Event
1999-01-19 Priority Date for ’166 and ’245 Patents
2001-08-14 ’166 Patent Issued
2005-03-29 ’245 Patent Issued
2011-01-01 Alleged launch of Defendant's transceiver-based RF motor line
2020-08-27 Complaint Filed
2021-12-28 ’166 Patent Ex Parte Reexamination Certificate Issued (Claims Cancelled)

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,275,166 - "RF Remote Appliance Control/Monitoring System," issued August 14, 2001

The Invention Explained

  • Problem Addressed: The patent describes prior art for controlling distributed systems in buildings (e.g., HVAC, lighting) as suffering from the high expense of wiring interconnections, especially when adding or changing system elements. Existing wireless solutions were also deficient due to the prohibitive cost, licensing requirements, and potential for interference associated with systems powerful enough for wide-area coverage (Compl. ¶¶11-12; ’166 Patent, col. 1:14-39).
  • The Patented Solution: The invention proposes a wireless control system using a "distributed array of low power (short range) wireless controllers that are also functional as relay units for communicating with a headend control computer at long range" (’166 Patent, col. 1:42-46). By using individual nodes to relay messages, the system can cover a large area without requiring any single transmitter to have a long range, thereby avoiding the cost and regulatory issues of high-power systems (Compl. ¶13).
  • Technical Importance: This "store-and-forward" or mesh networking approach allowed for the creation of scalable and robust control networks in complex environments like large buildings, forming a technical basis for many subsequent smart building and IoT technologies (’166 Patent, col. 8:29-33).

Key Claims at a Glance

  • The complaint asserts independent method claim 16 (Compl. ¶18).
  • Claim 16 requires the steps of:
    • Providing a headend computer with a main radio transceiver.
    • Providing a distributed array of relay units, each with a satellite radio transceiver and a unique serial number, with some units interfaced to appliances.
    • Signaling from the headend computer the addresses of at least three relay units (one destination, and first and second relay addresses) and a control signal.
    • Decoding the first relay address at a first relay unit.
    • Transmitting the control signal, second relay address, and destination address from the first relay unit.
    • Decoding the destination address at the destination relay unit.
    • Feeding the control signal to the appliance from the destination relay unit.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 6,873,245 - "RF Remote Appliance Control/Monitoring Network," issued March 29, 2005

The Invention Explained

  • Problem Addressed: As a continuation-in-part, the ’245 Patent addresses the same fundamental problem as the ’166 Patent: the cost, unreliability, and difficulty of use of prior art systems for controlling distributed devices (’245 Patent, col. 1:13-54).
  • The Patented Solution: The invention is an "appliance controller" that functions within a distributed system of relay units. The controller contains a low-power transceiver, an appliance interface, and a microcomputer with specific program instructions. These instructions enable it not only to control a local appliance but also to detect and retransmit "relay communications" directed between other units, thereby acting as a node in a multi-hop network (’245 Patent, col. 2:7-24).
  • Technical Importance: This patent focuses on the architecture of an individual node within a mesh network, defining its dual role as both an endpoint controller and a network repeater, which is a core concept for enabling self-organizing wireless networks (’245 Patent, col. 2:56-63).

Key Claims at a Glance

  • The complaint asserts independent apparatus claim 1 (Compl. ¶30).
  • Claim 1 recites an appliance controller comprising:
    • A low power satellite radio transceiver.
    • An appliance interface for communicating with a local appliance.
    • A microcomputer connected to the transceiver and interface.
    • First program instructions for detecting and responding to communications directed to it by another relay unit.
    • Second program instructions for detecting, transmitting, and handling reply communications between two other relay units.
    • The claim further requires that "at least some of the relay units communicate with others of the relay units by relay communications using at least two others of the relay units."
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Defendant’s Z-Wave enabled products, including Z-Wave AC motor controls (ABMHZ series), Z-Wave DC motor controls (DBMZ series), Z-Wave RQ transceivers (ZW RQ REC series), and the Z-Wave remote controller (TZ 3300) (Compl. ¶18).

Functionality and Market Context

  • The complaint alleges these products operate as part of a "Z-Wave wireless home control system" (Compl. p. 10). The Z-Wave motor controls and transceivers are described as forming a "distributed array of relay units" where each unit has a "satellite radio transceiver (e.g., a Z-Wave radio)" and a unique "NodeID" (Compl. ¶20). The system is alleged to use mesh networking, where commands are relayed through intermediate nodes (repeaters) to reach a destination device beyond the direct range of the primary controller (Compl. ¶¶21-23). The complaint includes a marketing document stating that "ESI Z-Wave® enabled motor controls allow for simple integration of motorized products into Z-Wave wireless home control systems" (Compl. p. 10). A diagram from a Z-Wave technical document is provided to illustrate this relay functionality (Compl. p. 14).

IV. Analysis of Infringement Allegations

’166 Patent Infringement Allegations

Claim Element (from Independent Claim 16) Alleged Infringing Functionality Complaint Citation Patent Citation
(a) providing a headend computer having a main radio transceiver; Defendant provides a primary controller, such as the Z-Wave remote controller, which functions as the headend computer. ¶19 col. 11:21-23
(b) providing a distributed array of relay units, each relay unit having a satellite radio transceiver and a unique serial number... Defendant provides Z-Wave motor controls and transceivers, which act as relay units, each having a Z-Wave radio and a unique NodeID. ¶20 col. 11:24-29
(c) signaling by the main transmitter...the addresses of at least three relay units, one...being a destination address, the other...first and second relay addresses, and a control signal... The Z-Wave remote controller allegedly signals addresses for two Z-Wave devices serving as repeaters and a destination Z-Wave device, along with a control signal. ¶21 col. 11:30-12:5
(d) decoding the first relay address at a first relay unit having a corresponding serial number; The first Z-Wave device acting as a repeater decodes its address (e.g., NodeID) from the signaled message. ¶22 col. 12:6-8
(e) transmitting the control signal, the second relay address, and the destination address from the first relay unit; The first repeater allegedly re-transmits the control signal and the addresses for the next repeater and the final destination. ¶23 col. 12:9-12
(f) decoding the destination address at the destination relay unit; and The final Z-Wave device in the chain decodes its destination address. ¶22, ¶24 col. 12:13-15
(g) feeding the control signal to the appliance from the destination relay unit. The destination Z-Wave device hardware feeds the control signal to the connected appliance, such as a motor. ¶24 col. 12:16-18
  • Identified Points of Contention:
    • Legal Question: The primary issue is the legal effect of the ex parte reexamination certificate that cancelled all claims of the ’166 Patent after the complaint was filed. This proceeding likely renders the cause of action for infringement of this patent moot.
    • Scope Question: A central claim construction dispute may arise over the term "headend computer." The specification describes it as a "personal computer" with substantial hardware specifications (’166 Patent, col. 4:11-25), raising the question of whether the accused handheld "Z-Wave remote controller" (Compl. ¶19) meets this definition.
    • Technical Question: Claim 16 recites a specific, ordered method of signaling, decoding, and transmitting addresses for a destination and at least two intermediate relays. It is an open question whether the accused Z-Wave protocol, which may use dynamic or different routing logic, is fairly described by this specific sequence of steps. The complaint provides a Z-Wave routing diagram showing a multi-hop path, which supports the general concept of relaying (Compl. p. 14, "Example 4: Routing via repeaters").

’245 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
(a) a low power satellite radio transceiver... The accused devices contain radio frequency transceivers, specifically Z-Wave radios. ¶32 col. 15:1-4
(b) an appliance interface for communicating with the at least one local appliance; The accused motor controls have an interface that "connects and makes possible the transmission of signal to the actual electrical appliance like a motor." ¶33 col. 15:5-7
(c) a microcomputer connected between the satellite radio transceiver and the appliance interface... The accused devices allegedly contain a microcontroller connected between the Z-Wave transceiver and the appliance interface. ¶34 col. 15:8-14
(d) the first program instructions including detecting communications directed by another of the relay units relative to the same appliance controller... The Z-Wave controller can allegedly "send/receive messages to program various connected Z-Wave devices" and receive commands. ¶35 col. 15:15-22
(e) the second program instructions including detecting relay communications directed between the another of the relay units and a different relay unit, transmitting the relay communications... A Z-Wave node allegedly "detects messages from primary controller and checks whether message is intended for itself, if not, then acting as a repeater, transmits it to next intended device in the route." ¶36 col. 15:23-28
  • Identified Points of Contention:
    • Scope Question: Claim 1 requires that "at least some of the relay units communicate...by relay communications using at least two others of the relay units." This language suggests a communication path involving at least four nodes (e.g., A -> B -> C -> D). What evidence does the complaint provide that the accused Z-Wave products are used in configurations that necessarily involve paths of this length? The complaint supports this with a Z-Wave Alliance document showing a command format for setting a route with up to four repeaters (Compl. p. 15).
    • Technical Question: The claim distinguishes between "first program instructions" (for handling messages directed to the controller itself) and "second program instructions" (for handling messages relayed between other units). What evidence will show that the accused devices' firmware contains these distinct sets of instructions as claimed, rather than a single, integrated routing logic?

V. Key Claim Terms for Construction

  • The Term: "headend computer" (’166 Patent, cl. 16)
    • Context and Importance: The infringement theory for the '166 patent maps this term to Defendant's handheld remote controller. Practitioners may focus on this term because the patent's specification provides a detailed and potentially limiting description of what constitutes a "headend computer".
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The term itself is generic, and the claims do not import specific hardware limitations. A party could argue it means any primary control unit in the network hierarchy.
      • Evidence for a Narrower Interpretation: The specification explicitly describes the "headend control computer (HCC) 16" as a "personal computer" with a Pentium P2 processor, 128 MB RAM, a hard disk, and other specific peripherals, suggesting a more substantial device than a simple remote (’166 Patent, col. 4:11-25).
  • The Term: "relay units" (’166 Patent, cl. 16; ’245 Patent, cl. 1)
    • Context and Importance: This term is fundamental to the claimed mesh networking architecture. Its construction will determine how accused Z-Wave devices, which are called "nodes" or "repeaters" in technical literature, map onto the claims.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent abstract and summary describe them broadly as units that retransmit communications, suggesting any device performing that function would qualify (’166 Patent, Abstract; col. 1:43-44).
      • Evidence for a Narrower Interpretation: The specification also refers to them with more specific terms like "appliance management stations (AMSs)" and "universal relay units (URUs)" (’166 Patent, col. 4:1-2, 4:51-52). The patent further distinguishes between an appliance controller and a pure "relay unit 20'" that is "functioning merely as a relay unit" (’166 Patent, col. 7:6-7), suggesting potential distinctions that could be argued during construction.

VI. Other Allegations

  • Indirect Infringement: The complaint does not include separate counts for indirect or contributory infringement and focuses its factual allegations on Defendant's direct infringement through its own actions (e.g., "internal testing and usage") and the making and selling of the accused products (Compl. ¶¶18, 30).
  • Willful Infringement: The complaint does not contain an allegation of willful infringement. It alleges only that Defendant had "constructive notice" of the patents "by operation of law," which is generally insufficient to support a claim for enhanced damages (Compl. ¶38).

VII. Analyst’s Conclusion: Key Questions for the Case

  1. Legal Viability: A threshold question, dispositive for the first count, is the impact of the '166 patent's reexamination. With all asserted claims having been cancelled subsequent to the filing of the complaint, the court will have to address whether any viable case or controversy remains with respect to that patent.
  2. Definitional Scope: A core claim construction issue will be whether the term "headend computer", described in the patent's embodiment as a feature-rich personal computer, can be broadly construed to encompass the accused handheld Z-Wave remote controller.
  3. Functional Equivalence: A central evidentiary question will be one of operational mapping: does the accused Z-Wave system, which operates on a standardized mesh protocol, implement the specific multi-step signaling and address-handling logic recited in method claim 16, or the distinct dual-function programming required by apparatus claim 1?