DCT
1:23-cv-02475
IoT Innovations LLC v. Leviton Manufacturing Co., Inc.
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: IoT Innovations LLC (Texas)
- Defendant: Leviton Manufacturing Co., Inc. (Delaware)
- Plaintiff’s Counsel: Rozier Hardt McDonough PLLC
- Case Identification: 1:23-cv-02475, N.D. Ga., 06/01/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains regular and established places of business in the district, including a facility in Marietta, Georgia.
- Core Dispute: Plaintiff alleges that Defendant’s Decora Smart Home control platform, including smart devices, cloud services, and mobile applications, infringes six patents related to personal digital gateways, dynamic messaging, natural language processing, and device setup.
- Technical Context: The lawsuit concerns technology in the Internet of Things (IoT) and smart home automation sector, a market characterized by interconnected devices that share data and respond to user commands.
- Key Procedural History: The complaint notes that U.S. Patent No. RE44,742 is a reissue of U.S. Patent No. 7,751,533, and U.S. Patent No. RE44,191 is a reissue of U.S. Patent No. 7,379,975. Reissue proceedings can give rise to intervening rights defenses, which may limit past damages for claims that were substantively amended during the reissue process.
Case Timeline
| Date | Event |
|---|---|
| 2001-11-13 | U.S. Patent No. 7,209,876 Priority Date |
| 2002-11-27 | U.S. Patent No. 7,474,667 Priority Date |
| 2004-04-16 | U.S. Patent No. RE44,191 Priority Date |
| 2005-05-02 | U.S. Patent No. RE44,742 Priority Date |
| 2007-04-18 | U.S. Patent No. 7,567,580 Priority Date |
| 2007-04-18 | U.S. Patent No. 7,983,282 Priority Date |
| 2007-04-24 | U.S. Patent No. 7,209,876 Issued |
| 2009-01-06 | U.S. Patent No. 7,474,667 Issued |
| 2009-07-28 | U.S. Patent No. 7,567,580 Issued |
| 2011-07-19 | U.S. Patent No. 7,983,282 Issued |
| 2013-04-30 | U.S. Patent No. RE44,191 Issued |
| 2014-02-04 | U.S. Patent No. RE44,742 Issued |
| 2023-06-01 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,567,580 - "Edge Side Assembler"
- Issued: July 28, 2009
The Invention Explained
- Problem Addressed: The patent addresses the challenge of managing and sharing up-to-date personalized information (e.g., contacts, preferences, messages) across a user's multiple, disparate communications devices, which often have different capabilities and data formats (’580 Patent, col. 2:1-15).
- The Patented Solution: The invention proposes a "personal digital gateway" that acts as a central hub to manage data for a common user's devices (’580 Patent, col. 3:5-9). An "edge side assembler" within this system identifies user data, locates and retrieves related data from a selected remote device, integrates it all, formats it for the selected device's specific capabilities, and communicates the formatted data to one or more of the user's devices (’580 Patent, col. 10:43-67; Fig. 4).
- Technical Importance: The technology aims to create a unified user experience by automating data synchronization and formatting across a growing ecosystem of personal electronic devices (’580 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶25).
- Claim 1 requires a method comprising the steps of:
- identifying data associated with a common user of a personal digital gateway and of a communications device selected from a plurality of communications devices;
- locating remote data stored the selected communications device;
- querying to retrieve the remote data;
- integrating the data and the remote data;
- formatting the integrated data according to a presentation format associated with the selected communications device; and
- communicating the formatted, integrated data to at least one of the plurality of communications devices.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. RE44,742 - "Dynamic Message Templates And Messaging Macros"
- Issued: February 4, 2014
The Invention Explained
- Problem Addressed: The patent describes the difficulty and tedium of text entry on mobile communication devices, which have small displays and input interfaces, making the manual creation of messages error-prone and time-consuming (RE44,742 Patent, col. 2:54-61). Pre-existing template systems still required significant manual input to fill in variable fields (RE44,742 Patent, col. 3:19-24).
- The Patented Solution: The invention provides a method for automatically creating messages by selecting a template with "dynamic fields" and using a device's "context data" (e.g., current location from GPS, a selected contact's name, a calendar entry) to automatically populate those fields without manual entry (’742 Patent, col. 5:15-23; col. 6:15-32). The system can also use macros to execute commands to retrieve data for insertion into the template (’742 Patent, col. 8:56-62).
- Technical Importance: This approach seeks to streamline mobile messaging by leveraging device and application context to reduce the need for manual typing, thereby increasing speed and accuracy (RE44,742 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts independent claim 22 (Compl. ¶35).
- Claim 22 requires a method comprising the steps of:
- determining, by a processing device, a message to be generated from a message template;
- automatically populating, by the processing device, a dynamic field of the message template with message context data in response to the determination; and
- sending, by the processing device, the message having the message context data in the dynamic field of the message template to a remote device.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 7,474,667 - "Multi-Path Gateway Communications Device"
- Issued: January 6, 2009
- Technology Synopsis: The patent describes a personal digital gateway that manages data for a user's various devices. It specifically claims a method for processing data by receiving a device selection, accessing a database of "rule-based profiles" that contain configuration and presentation parameters for those devices, retrieving the appropriate profile, integrating data into it, and communicating the result to the selected device (Compl. ¶53; ’667 Patent, Abstract).
- Asserted Claims: Claim 1 is asserted (Compl. ¶52).
- Accused Features: The complaint alleges that the Accused Products, including the My Leviton Cloud Service and App, perform the claimed method of using rule-based profiles to manage and communicate data to selected Decora Smart devices (Compl. ¶53).
U.S. Patent No. RE44,191 - "Electric Device, Computer, Program, System and Method Of Setting Up User Applications"
- Issued: April 30, 2013
- Technology Synopsis: This patent addresses simplifying the setup of applications that share data between two electric devices over a wireless interface. The invention claims a process of evaluating a "correspondence indicator value" based on information from both devices to characterize their "readiness" to execute a command, and then deciding whether to execute that command based on the value, thereby replacing a series of manual user actions (Compl. ¶69; ’191 Patent, Abstract).
- Asserted Claims: Claim 18 is asserted (Compl. ¶68).
- Accused Features: The complaint alleges the Accused Products, such as the My Leviton App and Decora devices, employ the claimed computer process to set up communications and execute commands between devices (Compl. ¶69).
U.S. Patent No. 7,209,876 - "System And Method For Automated Answering Of Natural Language Questions And Queries"
- Issued: April 24, 2007
- Technology Synopsis: The patent claims a method for processing natural language voice commands. The method involves receiving a query, initiating a search of an information repository, searching the results for "answer phrases" that are syntactically similar to the query, and modifying those phrases to provide a direct answer (Compl. ¶86; ’876 Patent, Abstract).
- Asserted Claims: Claim 1 is asserted (Compl. ¶85).
- Accused Features: The complaint alleges that the voice command functionality of the Accused Products, for example when a Decora Smart Voice Dimmer responds to an "Alexa" command, infringes by performing the claimed steps of receiving, searching, and formulating a direct answer (Compl. ¶¶ 86, 25).
U.S. Patent No. 7,983,282 - "Edge Side Assembler"
- Issued: July 19, 2011
- Technology Synopsis: Similar to the '580 patent, this patent relates to a personal digital gateway that manages data across multiple devices for a common user. It claims a method of identifying user data, receiving a selection of a communications device, retrieving remote data from that selected device, and then forwarding that remote data to another one of the user's devices (Compl. ¶102; ’282 Patent, Abstract).
- Asserted Claims: Claim 1 is asserted (Compl. ¶101).
- Accused Features: The complaint alleges that the Accused Products, including the My Leviton Cloud Service and App, perform this method of retrieving data from one device (e.g., a smart switch) and forwarding it to another (e.g., the user's phone) (Compl. ¶102).
III. The Accused Instrumentality
Product Identification
- The "Accused Products" are identified as Leviton's Smart Home control platform and systems (Compl. ¶15). This includes the Decora Smart® Devices (e.g., Switches, Dimmers, Plugs, Motion Sensors), the Leviton Smart Load Center, the My Leviton Cloud Service, and the My Leviton App (Compl. ¶16).
Functionality and Market Context
- The complaint describes the accused system as a platform that allows users to control and manage smart home devices wirelessly (Compl. ¶¶ 16-17). Functionally, the system is alleged to operate by having the My Leviton App and Cloud Service communicate with the various Decora Smart hardware devices to retrieve data, send commands, and provide status notifications to the user (Compl. ¶¶ 26, 36, 53).
- The system is also alleged to incorporate voice commands (Compl. ¶86) and provide users with notifications based on device status or events (Compl. ¶36). The products are marketed under the "Decora" brand name for smart home control (Compl. ¶15).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
U.S. Patent No. 7,567,580 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| identifying data associated with a common user of a personal digital gateway and of a communications device selected from a plurality of communications devices | The My Leviton App and Cloud Service identify data for a common user and a selected Decora Smart device. | ¶26 | col. 10:1-12 |
| locating remote data stored the selected communications device | The system locates data stored on the selected Decora device (e.g., a switch or dimmer). | ¶26 | col. 10:13-16 |
| querying to retrieve the remote data | The system queries the selected device to retrieve its stored data. | ¶26 | col. 10:21-23 |
| integrating the data and the remote data | The system integrates the user data with the remote data retrieved from the device. | ¶26 | col. 10:24-27 |
| formatting the integrated data according to a presentation format associated with the selected communications device | The integrated data is formatted for presentation within the My Leviton App or other interface. | ¶26 | col. 10:30-35 |
| communicating the formatted, integrated data to at least one of the plurality of communications devices | The formatted data is communicated to one of the user's devices, such as the phone running the My Leviton App. | ¶26 | col. 10:36-39 |
- Identified Points of Contention:
- Scope Questions: The case may turn on whether the accused cloud-and-app system constitutes a "personal digital gateway" as described in the patent. A further question is whether a smart home device like a switch or dimmer qualifies as a "communications device" from which "remote data" is located and retrieved, particularly in the sense contemplated by the patent's specification.
- Technical Questions: The complaint alleges the system "locat[es] remote data stored the selected communications device." A technical question is what data is actually "stored" on a Decora Smart Switch, versus data that is stored in the cloud and merely associated with that switch. The distinction may be critical for mapping the accused functionality to the claim language.
U.S. Patent No. RE44,742 Infringement Allegations
| Claim Element (from Independent Claim 22) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| determining, by a processing device, a message to be generated from a message template | The My Leviton App or Cloud Service determines that a status message or notification needs to be generated. | ¶36 | col. 15:23-26 |
| automatically populating, by the processing device, a dynamic field of the message template with message context data in response to the determination | The system automatically populates a variable part of the message (e.g., device name, status) with context data. | ¶36 | col. 15:27-30 |
| sending, by the processing device, the message having the message context data in the dynamic field of the message template to a remote device | The system sends the generated message (e.g., a push notification) to the user's remote device (e.g., smartphone). | ¶36 | col. 15:31-35 |
- Identified Points of Contention:
- Scope Questions: A central dispute will likely be whether the notifications generated by the Accused Products (e.g., "Living Room light is on") are created from a "message template" with a "dynamic field" as claimed. The defense may argue these are simple, hard-coded alerts rather than messages generated from a flexible template structure as described in the patent.
- Technical Questions: The complaint does not provide specific examples of the accused messages. A factual question will be what the underlying software architecture is for generating notifications in the Leviton system and whether it involves distinct templates and dynamic fields that are populated with context data at runtime.
V. Key Claim Terms for Construction
For the ’580 Patent
- The Term: "personal digital gateway"
- Context and Importance: This term defines the central component of the claimed invention. Its construction is critical because the infringement theory appears to map this term onto a distributed system of a cloud service and a mobile application, whereas the patent may describe a more localized, single-device gateway.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the gateway "interfaces different communications devices, connected networks, and/or systems" and provides "universal data controlled by the user," which could support a reading on a distributed, cloud-based architecture (’580 Patent, col. 5:11-14, col. 6:62-63).
- Evidence for a Narrower Interpretation: Figure 1 of the patent depicts the "Personal Digital Gateway 100" as a discrete hardware box with specific ports (keyboard, mouse, serial) and internal components (processor, memory), which may suggest a physical, localized device rather than a cloud service (’580 Patent, Fig. 1; col. 6:3-10).
For the RE44,742 Patent
- The Term: "message template"
- Context and Importance: The entire infringement theory for this patent rests on whether the accused system uses "message templates." Practitioners may focus on this term because its definition will determine whether simple status alerts fall within the claim scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states a template "provides a structural pattern for a message and is used as a starting point for creating the message," which could be argued to cover any message with a fixed part and a variable part (’742 Patent, col. 5:39-41).
- Evidence for a Narrower Interpretation: The specification provides examples like "I will call you in [minutes] minutes" and discusses a "database of templates," suggesting predefined, user-selectable structures with explicit fields for insertion, potentially distinguishing them from simple, system-generated status updates (’742 Patent, col. 3:20-22, col. 5:11-14).
VI. Other Allegations
- Indirect Infringement: For the '742, '667, '191, '876, and '282 patents, the complaint alleges both induced and contributory infringement. Inducement is based on allegations that Leviton provides instructions, advertising, and other active steps with the specific intent to cause end-users to infringe (e.g., Compl. ¶¶ 37, 54). Contributory infringement is alleged on the basis that the Accused Products have "special features" that are material to the invention and not staple articles of commerce suitable for substantial non-infringing use (e.g., Compl. ¶¶ 38, 55).
- Willful Infringement: Willfulness is alleged for the '742, '667, '191, '876, and '282 patents. The allegations are based on knowledge of the patents "at least as of the date when it was notified of the filing of this action" and, on information and belief, a "policy or practice of not reviewing the patents of others," which Plaintiff characterizes as willful blindness (e.g., Compl. ¶¶ 39-42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional and architectural scope: can terms rooted in an earlier era of technology, such as "personal digital gateway" and "communications device," be construed to cover the components of a modern, disaggregated cloud-and-app-based smart home ecosystem? The outcome may depend on whether the patents are read to claim a functional architecture or are limited to the specific hardware embodiments described.
- A second key issue will be one of functional correspondence: does the accused system's generation of status notifications and its handling of voice commands perform the specific, multi-step logical processes required by the asserted claims of the '742 and '876 patents, respectively? This will likely require a deep technical analysis of how the accused software operates versus the precise steps recited in the claims.
- A third question will relate to divided infringement: for the asserted method claims, the case will likely examine whether all steps are performed by a single actor (Leviton) or if the steps are divided between Leviton's cloud servers, the smart devices, and the end-user's mobile phone. If the latter, Plaintiff will need to demonstrate that Leviton directs or controls the other actors in a manner that satisfies the legal standard for liability.