Saros Licensing LLC v. Whirlpool Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Saros Licensing LLC (Texas)
  • Defendant: Whirlpool Corporation (Delaware)
  • Plaintiff’s Counsel: Devlin Law Firm LLC; Sand, Sebolt & Wernow Co., LPA
• Case Identification: 1:19-cv-00983, D. Del., 05/29/2019
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is incorporated in Delaware, which constitutes residence for venue purposes under TC Heartland.
• Core Dispute: Plaintiff alleges that Defendant’s smart refrigerators infringe a patent related to domestic appliances that have a primary function (e.g., cooling) and a secondary, network-connected function, where control over the primary function is specifically restricted.
• Technical Context: The dispute is set in the "smart home" or "Internet of Things" (IoT) sector, specifically concerning the integration of network connectivity and remote control into traditional domestic appliances.
• Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.

Case Timeline

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

• Patent Identification: 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 online services in the home due to the complexity, inconvenience, and perceived unreliability of personal computers (PCs) for everyday domestic tasks. The patent notes that PCs are often seen as "too complicated," located in the "wrong" room, and not trusted for sensitive applications like home banking. ('753 Patent, col. 1:49-65, col. 2:1-9).
  • The Patented Solution: The invention proposes embedding network-connected computing functions into a familiar domestic appliance, such as a microwave oven. This "smart appliance" has its traditional "primary domestic function" (e.g., cooking) and a "secondary function" of network interaction. To address safety and usability concerns, the patent describes a critical distinction in control: the ability to activate or deactivate the primary function is "reserved for the user interface" on the appliance itself, while a "remote control facility" is explicitly made "incapable" of performing that action. ('753 Patent, col. 3:32-44).
  • Technical Importance: This approach sought to lower the barrier to entry for home computing by integrating it into trusted, conveniently located devices, thereby encouraging the adoption of online services by consumers who were otherwise disinclined to use a dedicated PC for such tasks. ('753 Patent, col. 2:10-25).
• Key Claims at a Glance:
  • The complaint asserts independent claim 1 and dependent claims 2 and 4. (Compl. ¶¶ 15-19).
  • Independent Claim 1 recites:
    • A domestic food-processing appliance having a primary domestic function but adapted for the secondary function of interaction with a communications network.
    • The appliance comprises a user interface operable by direct contact with the appliance.
    • The appliance comprises a remote control facility operable by a remote control handset.
    • A negative limitation wherein activating or deactivating the primary function is reserved for the user interface, and the remote control facility is incapable of activating or deactivating the primary function.
  • The complaint reserves the right to assert additional claims as discovery progresses. (Compl. ¶39).

III. The Accused Instrumentality

• Product Identification: The "Whirlpool Refrigerator WRF995FIFZ" and its associated "Whirlpool app" are identified as the Accused Product. (Compl. ¶¶ 20, 22).
• Functionality and Market Context:
  • The complaint describes the accused refrigerator as a "domestic appliance for interaction with a communications network." (Compl. ¶20). Its relevant features include a "control panel" on the physical appliance and a companion "Whirlpool app" that runs on a smartphone, which allows for remote interaction with the refrigerator over a Wi-Fi network. (Compl. ¶¶ 21-22). The primary functions are identified as "defrosting or freezing." (Compl. ¶21).
  • The complaint alleges that the control panel on the refrigerator allows a user to turn the power on and off to activate or deactivate the defrosting or freezing function. (Compl. ¶24).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'753 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question may be whether the term "food-processing appliance," as described in a patent heavily focused on microwave ovens, can be construed to read on a refrigerator. A further question is what actions constitute "activating or deactivating the primary function" in the context of a refrigerator, which is typically always on, as opposed to a microwave, which has discrete cooking cycles.
  • Technical Questions: The complaint’s infringement theory for Claim 1 hinges on the remote app being "incapable" of controlling the primary function. (Compl. ¶23). However, in support of infringing Claim 4 (a dependent claim), the complaint alleges that the primary function "is operable (e.g., setting mode, temperature for defrosting or freezing) via the communications network." (Compl. ¶27). These allegations raise the question of how the primary function can simultaneously be inoperable via the remote facility (to meet Claim 1) yet operable via the same communications network (to meet Claim 4).

V. Key Claim Terms for Construction

• The Term: "primary domestic function"

  • Context and Importance: The definition of this term is critical because the core limitation of Claim 1—the inability of the remote to control this function—depends entirely on its scope. Practitioners may focus on whether this term encompasses only the binary on/off state of the appliance (e.g., starting a cooking cycle) or if it also includes modulating activities like adjusting temperature or selecting a mode. The complaint's seemingly contradictory allegations for Claim 1 and Claim 4 highlight this ambiguity. (Compl. ¶¶ 23, 27).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent states that "in most cases, the primary function of the appliance will be cooking, defrosting or freezing," which could suggest the term covers a range of related activities. ('753 Patent, col. 3:45-46).
    • Evidence for a Narrower Interpretation: The specification’s motivating concern is preventing a user from "inadvertently to use a remote control to start a cooking cycle on a microwave oven, or to switch off a freezer." ('753 Patent, col. 3:28-32). This safety-oriented context may support a narrower construction limited to the fundamental act of "starting" or "stopping" the core operation, rather than merely adjusting its parameters.

• The Term: "incapable of activating or deactivating"

  • Context and Importance: This negative limitation is the central feature of Claim 1. Its meaning will determine whether a remote application that can influence the primary function in any way (e.g., by changing a temperature setpoint) falls outside the claim.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation (Plaintiff's likely view): The patent reserves "activating or deactivating" for the local interface. ('753 Patent, col. 3:41-43). This could be interpreted to mean the specific, discrete act of turning the appliance on or off, while allowing the remote to control other operational parameters.
    • Evidence for a Narrower Interpretation (Defendant's likely view): Dependent Claim 6 states the remote facility "is capable of controlling the secondary function and optionally also part of the primary function." ('753 Patent, col. 24:8-10). This language, though not asserted, suggests the patent drafters contemplated a remote that could control part of the primary function. This may imply that "incapable of activating or deactivating" must mean a complete inability to influence the primary function in any way.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement and contributory infringement, asserting that Defendant provides its "Program Application" to customers, enabling them to control the Accused Product in an infringing manner. (Compl. ¶¶ 37-38).
• Willful Infringement: The complaint alleges that Defendant has had knowledge of infringement "at least as of the service of the present Complaint." (Compl. ¶31). This allegation appears to be a basis for post-suit willfulness only, as no facts supporting pre-suit knowledge are alleged.

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

• A core issue will be one of claim interpretation and consistency: can Plaintiff articulate a construction of "primary domestic function" and "incapable of activating or deactivating" that is both supported by the patent and reconciles the apparent contradiction in its infringement allegations for Claim 1 (which requires remote inability) and Claim 4 (which requires network operability)?
• A key evidentiary question will be one of technical functionality: what specific actions can the accused Whirlpool app actually perform with respect to the refrigerator's cooling and defrosting systems? The case will likely turn on whether any of those actions fall within the court's ultimate construction of "activating or deactivating the primary function."