Saros Licensing LLC v. BSH Home Appliances Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Saros Licensing LLC (Texas)
  • Defendant: BSH Home Appliances Corporation (Delaware)
  • Plaintiff’s Counsel: Devlin Law Firm LLC; Sand, Sebolt & Wernow Co., LPA
• Case Identification: 1:19-cv-00979, D. Del., 05/29/2019
• Venue Allegations: Plaintiff alleges venue is proper in the District of Delaware because Defendant is incorporated in Delaware, which constitutes residence under TC Heartland, and/or because Defendant has a regular and established place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s smart refrigerators, which feature network connectivity and a companion mobile application, infringe a patent related to integrating communications capabilities into domestic appliances.
• Technical Context: The technology concerns the addition of network-connected modules to conventional home appliances to provide internet-based services, a foundational concept in the "Internet of Things" (IoT) for the smart home market.
• Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patent-in-suit. The claim of willfulness is based on knowledge acquired no earlier than the filing of the complaint itself.

Case Timeline

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

U.S. Patent No. 6,480,753 - "COMMUNICATIONS, PARTICULARLY IN THE DOMESTIC ENVIRONMENT," issued November 12, 2002

The Invention Explained

• Problem Addressed: The patent identifies consumer reluctance to adopt personal computers (PCs) for routine household tasks like online banking or shopping. It notes that PCs were often perceived as complex, untrustworthy, and inconveniently located in a home office or bedroom rather than a central, shared space like the kitchen (’753 Patent, col. 1:32-44; col. 2:1-7).
• The Patented Solution: The invention proposes embedding a "substantially self-contained discrete communications module" into a familiar domestic appliance, such as a microwave oven, to provide internet and television functionality. By integrating advanced communication features into a trusted, commonly used device, the invention aimed to create an "easy-to-use computing device" that would be more readily accepted by consumers who were otherwise hesitant to use a traditional PC for such tasks (’753 Patent, Abstract; col. 2:10-14, 49-56).
• Technical Importance: This approach sought to "drive the next generation of computing within the home" by moving computational access from the office to the kitchen, thereby tapping into what the inventors saw as a "massive currently-offline market" (’753 Patent, col. 1:56-59).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 2 and 4 (Compl. ¶¶ 15, 17, 19).
• Independent Claim 1 recites the following essential elements:
  • A domestic food-processing appliance having a primary domestic function and adapted for a secondary function of interaction with a communications network.
  • A user interface operable by direct contact with the appliance.
  • A remote control facility operable by a remote control handset.
  • A negative limitation wherein activating or deactivating the primary function is reserved for the on-appliance user interface, and the remote control facility is "incapable of activating or deactivating the primary function."
• The complaint does not explicitly reserve the right to assert other claims, but it does reserve the right to modify its infringement theories (Compl. ¶39).

III. The Accused Instrumentality

Product Identification

• The complaint identifies the "Bosch Built-In Refrigerator B09IB81NSP" as a representative "Accused Product," along with its companion smartphone application, the "Bosch Home Connect app" (Compl. ¶¶ 20, 22).

Functionality and Market Context

• The complaint describes the Accused Product as a domestic refrigerator (a food-processing appliance) whose primary function is defrosting or freezing (Compl. ¶21).
• It is adapted for a secondary function of wireless communication with a Wi-Fi network, which is managed via the Bosch Home Connect app operating on a smartphone (Compl. ¶¶ 21-22). The appliance has an on-board control panel, and the app serves as the remote control facility (Compl. ¶22).
• The complaint alleges that while the app can control certain features, it is incapable of performing the primary function (e.g., activating or deactivating defrosting or freezing), which can only be done via the control panel on the refrigerator itself (Compl. ¶¶ 23-24).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges infringement of at least Claim 1 of the ’753 Patent. While it references a claim chart in an "Exhibit B" that was not attached to the publicly filed document, the body of the complaint narrates the infringement theory, which is summarized below (Compl. ¶¶ 20-24).

’753 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Question: A central issue may be the definition of "primary domestic function" as applied to a refrigerator. The patent provides "cooking, defrosting or freezing" as examples (’753 Patent, col. 3:47-49). The parties may dispute which specific operations (e.g., initiating a defrost cycle, changing the master temperature setpoint, turning the cooling system on/off) constitute the "primary function" that the remote facility must be incapable of controlling.
  • Technical Question: The infringement reading hinges on the negative limitation that the remote app is "incapable" of controlling the primary function. The case may require a detailed factual analysis of the Bosch Home Connect app's software and the refrigerator's firmware to determine if there is any pathway, direct or indirect, for the app to activate or deactivate the core cooling/freezing operations, which could challenge the allegation of incapability.

V. Key Claim Terms for Construction

• The Term: "primary domestic function"

• Context and Importance: This term is critical because it defines the specific capability that the accused remote control facility must lack for infringement to occur. The Plaintiff alleges this function for a refrigerator is "defrosting or freezing" (Compl. ¶21). The defense may argue for a different or more nuanced definition to show that the app can, in fact, control some aspect of what it considers the primary function.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The body of Claim 1 does not limit the term to a specific action, referring generally to the "primary domestic function" of a "domestic food-processing appliance" (’753 Patent, col. 23:20-22). This language may support an interpretation where the term's meaning adapts to the specific type of appliance at issue.
  • Evidence for a Narrower Interpretation: Dependent claim 2 explicitly recites that the primary function "is cooking, defrosting, or freezing" (’753 Patent, col. 23:30-32). A defendant may argue that this dependent claim, along with the specification's heavy focus on a microwave oven embodiment, confines the interpretation of "primary function" to these specific, explicitly named actions.

• The Term: "incapable of activating or deactivating"

• Context and Importance: This negative limitation lies at the heart of the infringement allegation. Practitioners may focus on this term because its interpretation—whether it means absolutely and technically impossible or merely not an intended or user-facing feature—will determine whether the accused product infringes. The complaint makes a direct factual assertion of this incapability (Compl. ¶23).

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation (favoring non-infringement): A defendant could argue that "incapable" implies an absolute technical inability. If the app can affect the primary function in any way (e.g., by triggering a diagnostic mode that resets the function), one could argue it is not "incapable."
  • Evidence for a Narrower Interpretation (favoring infringement): The claim also states that control is "reserved for the user interface" (’753 Patent, col. 23:26-27). A plaintiff could argue that "incapable" should be read in this context to mean that the remote facility, as designed and presented to the user, lacks the means to perform the function, distinguishing it from the dedicated on-appliance interface.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both contributory and induced infringement. The allegations state that Defendant is liable by providing the "Program Application" (the Bosch Home Connect app) to customers who use it to control the Accused Product in an infringing manner (Compl. ¶¶ 37-38).
• Willful Infringement: The complaint alleges knowledge of the ’753 Patent "at least as of the service of the present Complaint" (Compl. ¶31). This pleading appears to lay the groundwork for a claim of post-suit willful infringement rather than alleging pre-suit knowledge.

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

This dispute appears to center on the interpretation and application of a single, crucial negative limitation in the asserted patent claim. The key questions for the court will likely be:

1. A question of definitional scope: What constitutes the "primary domestic function" of the accused refrigerator within the meaning of a patent whose specification is primarily focused on a microwave oven? Does it encompass all cooling and defrosting operations, or only a specific subset?
2. A key evidentiary and technical question: Is the accused Bosch Home Connect app truly "incapable" of activating or deactivating that primary function? The resolution will likely depend on a factual deep-dive into the product's software architecture, turning on whether "incapable" requires an absolute technical barrier or is satisfied by the absence of a user-facing control for that specific function.