DCT
1:23-cv-00977
Portus Singapore Pte Ltd v. Schneider Electric USA Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Portus Singapore Pte LTD (Singapore) and Portus Pty Ltd. (Australia)
- Defendant: Schneider Electric USA, Inc. (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC; Clayton, McKay & Bailey, PC
- Case Identification: 1:23-cv-00977, D. Del., 09/05/2023
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation and thus resides in the district. The complaint further alleges that Defendant conducts regular business and commits acts of infringement within the district by distributing and selling the accused products.
- Core Dispute: Plaintiff alleges that Defendant’s smart home, video surveillance, and energy management systems infringe two patents related to architectures for remote access and control of devices within a user’s premises via a web browser and an external network.
- Technical Context: The technology concerns methods for using a centralized, external server to broker a connection between a remote user (e.g., on a computer or phone) and a local network gateway, making in-home devices securely accessible and controllable over the internet as if they were part of a website.
- Key Procedural History: The complaint alleges a substantial pre-litigation history, including strategic investment discussions between the parties from 2006 to 2011. Crucially, Plaintiff alleges it sent Defendant a notice letter in 2015, which included claim charts outlining infringement of the ’526 Patent by Defendant's MultiSight product. This history is central to the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1998-12-17 | Priority Date for ’526 and ’097 Patents |
| 2002-01-01 | Portus has dealings with Clipsal |
| 2003-01-01 | Schneider acquires Clipsal (approximate date) |
| 2006-01-01 | Schneider contacts Portus to explore strategic investment |
| 2011-08-31 | Final alleged pre-notice communications between Portus and Schneider |
| 2014-12-16 | ’526 Patent Issued |
| 2015-01-01 | Portus alleges sending notice of infringement and claim charts to Schneider |
| 2018-05-01 | ’097 Patent Issued |
| 2023-09-05 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,914,526 - "Local and Remote Monitoring Using a Standard Web Browser"
- Patent Identification: U.S. Patent No. 8,914,526, "Local and Remote Monitoring Using a Standard Web Browser," issued December 16, 2014 (Compl. ¶21, ¶25).
The Invention Explained
- Problem Addressed: The patent describes that prior to the invention, remotely controlling home automation and security systems was often cumbersome, relying on "non-visual monitoring and control mechanisms" like entering codes via a telephone handset ('526 Patent, col. 1:37-41; Compl. ¶28). These systems lacked a universally accessible, platform-independent standard interface (Compl. ¶29).
- The Patented Solution: The invention proposes a system architecture where an external network (an "extranet") contains a communications server that connects on-demand to a gateway located within a user's premises ('526 Patent, Abstract). This architecture allows a remote user with a standard web browser to access and control local devices, making the home "effectively appear[] to them as a website" ('526 Patent, col. 2:49-52; Compl. ¶32).
- Technical Importance: This approach standardized remote access by leveraging the then-emerging ubiquity of the internet and web browsers, offering a graphical, location-independent alternative to proprietary hardware or telephone-based control systems (Compl. ¶29).
Key Claims at a Glance
- The complaint asserts independent claim 57 (Compl. ¶74, ¶76).
- Essential elements of claim 57 include:
- A system with a "first network" (external to the user premises) containing processing circuitry and a "hardware user access browser device."
- A plurality of "second arrangements of processing circuitry" (e.g., connection gateways) located within respective user premises networks.
- The first network's circuitry is programmed to initiate connections to the gateways, responsive to a user entering a URL into the browser.
- Based on authorization data, the first network's circuitry determines which user premises to connect to and establishes a "new communications session."
- During this session, the first network obtains information from the gateway and serves it to the user's browser, providing "seamless access" to control and monitor devices.
- The complaint reserves the right to assert additional claims (Compl. ¶82).
U.S. Patent No. 9,961,097 - "System for Remote Access of a User Premises"
- Patent Identification: U.S. Patent No. 9,961,097, "System for Remote Access of a User Premises," issued May 1, 2018 (Compl. ¶38, ¶42).
The Invention Explained
- Problem Addressed: The patent identifies the same challenges as the ’526 Patent, namely the expense and complexity of remote access and the lack of a standard, user-friendly interface for controlling in-home systems (’097 Patent, col. 2:1-14).
- The Patented Solution: The invention describes a system for remote access where a user inputting a URL initiates a sequence of events. A remote server ("second hardware processing circuitry") receives authentication data and, in response, serves information to the user's device ("first hardware processing circuitry") regarding networked components in the home (’097 Patent, col. 14:38-65). A key feature is that this information is obtained from the local connection gateway "without a direct communicative coupling" between the remote server and the end-device itself (Compl. ¶99g).
- Technical Importance: This patent refines the architectural concept of the ’526 patent family, focusing on the specific sequence of authentication and data retrieval brokered by an external server to provide secure access to a plurality of distinct user premises (Compl. ¶44).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶98, ¶99).
- Essential elements of claim 1 include:
- A system with a "first hardware processing circuitry" running an "access browser module," a "second hardware processing circuitry" in an external network, and a "connection gateway" in the user's local network.
- User input of a URL begins a "sequence" where the second circuitry serves information to the first circuitry regarding local networked components.
- This information is obtained from the gateway "without a direct communicative coupling" between the second circuitry and the local component.
- The sequence requires the transmission of "authentication data," which the second circuitry uses to determine which of a plurality of local networks it has authority to access.
- The second circuitry establishes a new communication session and stores information received from the gateway for subsequent review by the user.
- The complaint reserves the right to assert additional claims (Compl. ¶105).
III. The Accused Instrumentality
Product Identification
- The complaint names a suite of Schneider's remote monitoring and control products, principally the "Multisight platform," "VideoXpert video management platform," "Wiser and Wiser Air" energy products, and "EVlink Charging Stations" (Compl. ¶61-62).
Functionality and Market Context
- The accused products collectively form systems that allow users to remotely monitor and control devices such as cameras and thermostats (Compl. ¶61-63). The architecture, as described in the complaint, consists of on-premises hardware (e.g., "Multisight Gateway," cameras) that communicates with a cloud-based service (the "MultiSight Cloud," alleged to be the "Defendant's External Network") (Compl. ¶68-69).
- Users interact with the system through web portals or dedicated smartphone applications (the "Defendant System Apps") to view data and issue commands (Compl. ¶66). The complaint includes a marketing diagram showing the MultiSight Cloud architecture, which depicts local customer sites connecting to a central cloud that serves various managers and support personnel. This "MultiSight Communications Overview" illustrates the system's distributed nature (Compl. p. 13, Figure 2).
IV. Analysis of Infringement Allegations
'526 Patent Infringement Allegations
| Claim Element (from Independent Claim 57) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first network (a) located external to said user premises... | The Defendant's "MultiSight Cloud" and associated servers form an external network (the "Defendant External Network"). | ¶76a | col. 6:18-24 |
| (b) including a first arrangement of processing circuitry comprising at least one hardware processor programmed to control network access... | The Defendant's Servers in the external network have processors programmed to control network access, for example, through a username and password system. | ¶76a | col. 6:49-55 |
| (c) including a hardware user access browser device that comprises a processor running an access browser... | Defendant's system provides a user interface accessible through the "Defendant System Apps" on devices with processors. | ¶76a | col. 6:9-17 |
| a plurality of second arrangements of processing circuitry each comprising at least one hardware processor... located in a respective one of the user premises... | The Defendant's system includes a plurality of connection gateways, such as the Defendant's Cameras and Gateways, located at user sites. | ¶76b | col. 1:40-42 |
| responsive to user-input of a URL... said first circuitry arrangement subsequently... determines which one of said user premises networks... authorization data indicates authority to... | When a user accesses the Defendant's System App (likened to inputting a URL), the system uses authorization data to determine which home network to access and control. | ¶76g, ¶76h | col. 12:4-13 |
| initiates an establishment of a network connection... to create a new communications session... | The Defendant's Server creates a new communications session between itself and the determined Connection Gateway in a user's home network. | ¶76i | col. 12:42-50 |
| obtains information contained within the user's premises network from the second circuitry arrangement... | The Defendant's External Network obtains or receives information (e.g., video) from the on-premise Connection Gateway. | ¶76j | col. 12:56-61 |
| using a web server, serves to the user's access browser the information from the second circuitry arrangement... | The system's servers provide the information from the on-premise device to the Defendant's System Apps for the user to view. | ¶76k | col. 12:61-65 |
- Identified Points of Contention:
- Scope Questions: A central question will be whether a modern smartphone application (the "Defendant System App") constitutes a "user access browser" as contemplated by the 1998-priority patent. The defense may argue the terms are not equivalent, while the plaintiff will likely contend an app serves the same function of accessing and displaying information via network protocols.
- Technical Questions: Claim 57 recites a specific sequence where the external server "obtains information... from" the gateway and then "serves" it to the browser. The complaint includes a diagram showing that communication to the MultiSight Cloud is initiated via outbound HTTPS connections from the gateway. The precise nature and sequence of this data flow in the accused system will be scrutinized to determine if it matches the claim language. (Compl. p. 18, Figure 1).
'097 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first hardware processing circuitry running an access browser module... | The accused system utilizes a user device (e.g., smartphone) with a processor running the Defendant's System App to access the internet. | ¶99a | col. 14:40-42 |
| a second hardware processing circuitry located in a first network... | The accused system includes a second processor in the Defendant's External Network (e.g., the MultiSight Cloud). | ¶99b | col. 14:43-44 |
| a connection gateway that is located in, and is part of a local network of, the user premises... | The accused system includes connection gateways, such as cameras and base stations, located on the user's local network. | ¶99c | col. 14:45-47 |
| which information the second hardware processing circuitry obtains from the connection gateway without a direct communicative coupling between the second hardware processing circuitry and the at least one networked component of the local network... | The complaint alleges that Defendant's servers are not directly coupleable to end-user devices, as communication is routed through the connection gateways, and accessing the app provides authorization data like a login. | ¶99g | col. 14:62-65 |
| the sequence further including the second hardware processing circuitry determining which one of the local networks the authentication data indicates authority to access... | The Defendant's server is configured to use the user's login credentials to determine which home network the user is authorized to access. | ¶99k | col. 15:8-13 |
| the second hardware processing circuitry receives, via the connection gateway, selected information... and stores the selected information in the first network for subsequent review... without requiring the user to provide the authentication data... | Information from the devices, such as video data, is stored in the external network (cloud) and can be reviewed by an authenticated user without re-entering login information. | ¶99m | col. 15:33-42 |
- Identified Points of Contention:
- Scope Questions: The negative limitation "without a direct communicative coupling" will be a focal point. The plaintiff alleges this is met because the cloud servers connect to the gateway, not the end-device. The defense may argue that this architecture still creates a functional "coupling" between the server and the device, just one that is brokered by the gateway.
- Technical Questions: Claim 1 requires a specific "sequence" of operations. The defense will likely examine whether the complex, real-time interactions in a modern cloud-based IoT system (which may involve APIs, persistent connections, and push notifications) map onto the more linear sequence of "serving" information described in the patent.
V. Key Claim Terms for Construction
Term: "user access browser" / "access browser module" (
’526 Patent,’097 Patent)- Context and Importance: These terms appear in the asserted claims of both patents. Their construction is critical because the accused systems are primarily accessed via dedicated smartphone applications, whereas the patents were filed in the era of desktop web browsers. The viability of the infringement case may depend on whether an "app" is considered a "browser."
- Intrinsic Evidence for a Broader Interpretation: The specifications describe the browser's function as providing a "standard interface" and supporting protocols like HTTP, which could be argued to encompass modern apps that use the same underlying protocols to provide a user interface for network access (’526 Patent, col. 2:50-54; col. 6:13-17).
- Intrinsic Evidence for a Narrower Interpretation: The specifications repeatedly use the terms "web browser," "Internet browser," "HTML page," and "URL," which may suggest an intended scope limited to traditional, document-based web browsers rather than self-contained, compiled applications (’526 Patent, Abstract; col. 8:40-50).
Term: "without a direct communicative coupling" (
’097 Patent)- Context and Importance: This negative limitation in claim 1 is a key differentiator. Its interpretation will determine whether the accused system's architecture, where a cloud server communicates with an end-device via an on-premise gateway, falls within the claim's scope.
- Intrinsic Evidence for a Broader Interpretation (i.e., finding no coupling): The patent describes an architecture where the external server ("extranet") is distinct from the local network, and the gateway is the intermediary. This could support a reading that any brokered connection is, by definition, not a "direct coupling" (’097 Patent, col. 11:46-54, Fig. 1).
- Intrinsic Evidence for a Narrower Interpretation (i.e., finding a coupling exists): The patent also describes the gateway acting as a "hub and Internet connection mechanism" and a "router" (’526 Patent, col. 10:15-20). A defendant could argue that if the gateway simply routes traffic, a functional communicative coupling is established between the external server and the end-device, even if it is not a direct physical link.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. It asserts that Schneider encourages infringement by providing user manuals, instructional videos, websites, and technical support that instruct customers on how to use the accused systems in a manner that performs the claimed steps (Compl. ¶85, ¶91). The complaint also alleges the products are especially designed for this use and have no substantial non-infringing uses (Compl. ¶92).
- Willful Infringement: The willfulness allegations are based on extensive alleged pre-suit knowledge. The complaint details years of communication between the parties and, most significantly, alleges that Portus sent Schneider a notice letter in 2015 with "detailed claim chart[s]" accusing the MultiSight system of infringing the ’526 Patent (Compl. ¶59, ¶84, ¶94). The complaint also alleges willful blindness for any infringement not covered by the 2015 notice (Compl. ¶87).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological translation: Can claim terms from a 1998-priority patent, such as "user access browser," be construed to encompass modern smartphone applications? The resolution of this question will heavily influence whether the primary means of accessing the accused systems can meet a foundational limitation of the asserted claims.
- A key architectural question will be one of claim scope: Does the accused system's cloud architecture—where an on-premise gateway initiates outbound connections to a central server that brokers remote access—fall within the scope of the patent claims, particularly the "without a direct communicative coupling" limitation of the ’097 patent? This will require a detailed analysis of the system's data flow versus the specific sequence of operations recited in the patent claims.
- A central evidentiary question will concern willfulness: What evidence exists to substantiate the complaint's allegation that Schneider received notice and detailed infringement claim charts in 2015? The existence and content of this alleged communication will be critical to Plaintiff's pursuit of enhanced damages.