DCT
2:19-cv-02029
Portus Singapore Pte Ltd v. Zmodo Technology Corp Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Portus Singapore Pte Ltd (Singapore) and Portus Pty Ltd. (Australia)
- Defendant: Zmodo Technology Corporation Limited (Nevada)
- Plaintiff’s Counsel: Direction IP Law; Ni, Wang & Massand, PLLC
- Case Identification: 2:19-cv-02029, C.D. Ill., 05/31/2019
- Venue Allegations: Plaintiff alleges venue is proper in the Central District of Illinois because Defendant maintains a regular and established place of business in the district and has committed acts of patent infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s remote home monitoring systems, including its cameras and cloud services, infringe two patents related to using a standard web browser and an external network to securely access and control devices within a user's premises.
- Technical Context: The technology relates to the architecture of "smart home" or Internet of Things (IoT) systems, enabling remote access to local devices like security cameras and sensors via the internet.
- Key Procedural History: The complaint alleges that Plaintiff's agent sent a letter to Defendant in January 2017, identifying the asserted patents and providing a claim chart for the ’526 Patent against Defendant’s products. This pre-suit notice forms the primary basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 1998-12-17 | Priority Date for ’526 and ’097 Patents |
| 2014-12-16 | U.S. Patent No. 8,914,526 Issues |
| 2017-01-XX | Plaintiff's agent allegedly sends pre-suit notice letter to Defendant |
| 2018-05-01 | U.S. Patent No. 9,961,097 Issues |
| 2019-02-07 | Date from which Defendant allegedly knew its actions would induce infringement |
| 2019-05-31 | Amended 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," issued December 16, 2014
The Invention Explained
- Problem Addressed: The patent describes the difficulty in the late 1990s of conveniently and securely monitoring and controlling home security and automation systems from a remote location. Existing methods were described as cumbersome, often requiring complex non-visual interfaces (like telephone keypads) or assuming the home network was permanently connected to the internet, while surveillance data was often left unprotected on-site. (’526 Patent, col. 1:31-col. 2:28).
- The Patented Solution: The invention proposes a three-part architecture: a user's device running a standard internet browser, a "connection gateway" within the user's home that connects to local devices (e.g., cameras, sensors), and an intermediary "extranet" (a secure, external server network). A user connects to the extranet via their browser, and the extranet's communication server then establishes an on-demand connection to the specific user's home gateway. This allows the user to monitor and control their home devices through a standard web interface without requiring a direct, persistent connection from the home to the internet. (’526 Patent, Abstract; Fig. 1).
- Technical Importance: This architecture aimed to provide a geographically and hardware-independent standard interface for home automation by leveraging the ubiquitous web browser, separating the user's control device from the specific technology within the home. (’526 Patent, col. 1:47-54).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 59. (Compl. ¶¶ 19, 32).
- Independent Claim 1 recites a system comprising: (1) an Internet browser hardware device running a browser; (2) an external extranet; (3) a plurality of in-premises connection gateways; and (4) at least one communications server in the extranet. The claim requires a specific sequence where, after a user provides a URL and authorization, the server determines the correct home network, creates a new communication session with that home's gateway, obtains information from it, and serves a webpage with that information back to the user's browser.
- Independent Claim 59 recites a similar system but is oriented around a "mobile device" with a "user interface" rather than an "Internet browser hardware device," and requires the extranet to serve information back to the mobile device for display in its user interface.
- The complaint reserves the right to assert numerous dependent claims. (Compl. ¶19).
U.S. Patent No. 9,961,097 - "System for Remote Access of a User Premises," issued May 1, 2018
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’526 patent, this patent addresses the same problems of providing secure, platform-independent remote access to home networks. (’097 Patent, col. 2:4-29).
- The Patented Solution: The ’097 Patent claims a similar system architecture but uses different terminology, such as a "first hardware processing circuitry" (the user's device) and a "second hardware processing circuitry" (the external server). A key feature added in the claims of this patent is the ability for the external server to receive and store information from the home network (e.g., video from a security event) for later review by the user, even "without requiring the user to provide the authentication data" at the moment of capture. (’097 Patent, Abstract; col. 14:15-20).
- Technical Importance: The invention explicitly claims functionality for cloud-based storage of surveillance data captured from a user's premises, a foundational feature of modern remote security monitoring services. (’097 Patent, col. 14:15-20).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 19. (Compl. ¶¶ 35, 50).
- Independent Claim 1 recites a system comprising: (1) a first hardware processing circuitry (user device); (2) a second hardware processing circuitry (server); and (3) an in-premises connection gateway. The claim requires a sequence where user input of a URL initiates the server serving information from the gateway to the user device, but also requires that the server can receive and store selected information from the gateway "without requiring the user to provide the authentication data."
- Independent Claim 19 is substantially similar to claim 1 but frames the user-side element as a "first hardware processing circuitry including a user interface."
- The complaint reserves the right to assert numerous dependent claims. (Compl. ¶35).
III. The Accused Instrumentality
Product Identification
The complaint identifies the "Accused Instrumentalities" as the system comprising the Zmodo "Pivot, Pivot Cloud, and Pan and Tilt Camera in combination with the Zmodo website user.zmodo.com." (Compl. ¶12).
Functionality and Market Context
The complaint alleges the accused system provides remote access and control of home networks. (Compl. ¶20). The Zmodo Pivot and Pan and Tilt Cameras are alleged to function as in-premises "connection gateways" that connect to other devices like door and window sensors. (Compl. ¶20, ¶24). The "Pivot Cloud" and Zmodo servers are alleged to function as the external network or "extranet." (Compl. ¶12, ¶20). According to the complaint, a user operating a device like a smartphone with a browser or the "Zmodo App" can log into the Zmodo server, which in turn establishes a connection to the user's camera to provide monitoring and control. (Compl. ¶20, ¶32). The system is also alleged to capture and store video of alert events on the server for later user review. (Compl. ¶25). The complaint repeatedly references figures in Exhibits A and B for factual support of these functionalities, such as a webpage with controls for smart lighting, but these exhibits were not provided with the complaint document. (Compl. ¶31).
IV. Analysis of Infringement Allegations
’526 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an Internet browser hardware device including a processor running an Internet browser | A user device such as a "smartphone, tablet, or computer with an internet browser." | ¶20 | col. 6:10-15 |
| an extranet located external to said user premises and accessible via said Internet browser | A Zmodo server "which is located outside of the user premises" and is accessible to the user. | ¶20 | col. 6:23-28 |
| a plurality of connection gateways each comprising a hardware processor...each...located in a respective one of the user premises | The Zmodo "Pivots and Pan and Tilt Cameras," with individual devices located at the premises of different users. | ¶20 | col. 2:39-43 |
| at least one communications server...located in said extranet and adapted to interconnect on-demand with said connection gateways | A Zmodo server that is "adapted to connect to Pivots and Pan and Tilt Cameras when a user logs into their account." | ¶20 | col. 2:37-39 |
| the at least one communications server not being communicatively coupleable to the one or more networked components of the respective home network | The server connects to the in-home Pivot/camera, which in turn connects to other networked components (e.g., sensors) via the home network, establishing an indirect connection. | ¶20 | col. 7:25-40 |
| responsive to user-input of a Uniform Resource Locator...one of said at least one communications server subsequently: determines...creates a new communications session...obtains information...and serves a webpage | A user logs in, the server determines which Pivot device to access, connects to it, obtains information (e.g., from door sensors), and sends a webpage with this information to the user's browser. | ¶20 | col. 8:41-67 |
’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 | A user device such as "a smartphone, tablet, or computer." | ¶36 | col. 14:41-43 |
| a second hardware processing circuitry...located in a first network | A Zmodo server located in an external network. | ¶36 | col. 14:44-45 |
| a connection gateway that is located in, and is part of a local network of, the user premises | The "Pivot or Pan and Tilt Camera" connected to the user's local network. | ¶36 | col. 14:46-48 |
| which information the second hardware processing circuitry obtains from the connection gateway without a direct communicative coupling | The server allegedly "receives the information related to the connected devices via the hub, and is not directly connected to the networked devices." | ¶36 | col. 14:62-67 |
| wherein the second hardware processing circuitry...stores the selected information in the first network...without requiring the user to provide the authentication data | The Zmodo server "receives and stores video from networked video cameras even while the user is not logged into the server." | ¶36 | col. 14:15-20 |
Identified Points of Contention
- Scope Questions: The ’526 Patent claims an "Internet browser," while the complaint acknowledges the accused system can be operated via a dedicated "Zmodo App." (Compl. ¶32). A potential point of dispute is whether a proprietary application constitutes an "Internet browser" as understood in the patent. The definition of "extranet" may also be contested, specifically whether Zmodo's cloud infrastructure (Compl. ¶12) meets the patent's description, which includes a Virtual Private Network (VPN) as an ideal implementation (’526 Patent, col. 2:46-48).
- Technical Questions: A key factual question is whether the accused system's architecture matches the claimed indirect communication path, where the server is "not...communicatively coupleable" to the end-point devices (e.g., sensors) and must communicate via the gateway. (Compl. ¶20). For the ’097 Patent, a central technical question will be whether the accused system factually stores data from the premises on its servers "without requiring the user to provide the authentication data," as claimed. (Compl. ¶36).
V. Key Claim Terms for Construction
The Term: "Internet browser" (’526 Patent, Claim 1)
- Context and Importance: This term's construction is critical because the accused system involves both a website accessible by standard browsers and a dedicated "Zmodo App." (Compl. ¶12, ¶32). Whether the App falls within the term's scope could broaden or narrow the extent of infringing activity.
- Intrinsic Evidence for a Broader Interpretation: The specification refers to a "client web browser supporting the HyperText Transfer Protocol (HTTP)" and lists examples including not just computers but also a "mobile phone with display" and "Personal Digital Assistant." (’526 Patent, col. 6:10-18). This may support a functional interpretation covering any client software that uses HTTP to render information.
- Intrinsic Evidence for a Narrower Interpretation: The patent repeatedly refers to a "standard web browser" (’526 Patent, col. 1:8) and "standard platform independent...mechanisms" (’526 Patent, col. 2:27-28), which could support an argument that the term is limited to general-purpose browsers (e.g., Netscape Navigator, Internet Explorer of the era) and excludes a special-purpose, proprietary application.
The Term: "extranet" (’526 Patent, Claim 1)
- Context and Importance: The infringement theory relies on mapping the accused "Pivot Cloud" and Zmodo servers onto the claimed "extranet." (Compl. ¶20). The construction of this term will determine if the accused cloud architecture meets this limitation.
- Intrinsic Evidence for a Broader Interpretation: The patent provides a broad, functional definition: "An extranet is a private network that uses the Internet protocols and the public telecommunication system to securely share part of a business's information or operations with...customers". (’526 Patent, col. 6:29-33). This could be argued to encompass modern, secure cloud services provided to customers.
- Intrinsic Evidence for a Narrower Interpretation: The specification also states, "The extranet can ideally be implemented as a Virtual Private Network (VPN) across an Internet substrate." (’526 Patent, col. 2:46-48). A defendant may argue this suggests the term requires a more specific architecture with the properties of a VPN, rather than any server system accessible over a standard encrypted web connection.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by its resellers and end-users. (Compl. ¶56). The alleged inducing acts include selling the products while providing "instruction manuals, advertisement of the infringing features, and support," with a specific support webpage cited as an example of instructions to infringe. (Compl. ¶¶ 60, 62). Knowledge is alleged based on a February 7, 2019 date and the filing of the complaint. (Compl. ¶¶ 61-62).
- Willful Infringement: The allegation of willful infringement is based on pre-suit knowledge. The complaint alleges that in January 2017, "Plaintiffs' agent Global IP Law Group sent a letter to Defendant which included the '527 [sic] and '097 Patents." It further alleges this letter included a chart showing how the ’526 Patent claims "were met by the Zmodo Pivot." (Compl. ¶65). The continued sales after this alleged notice are characterized as "egregious." (Compl. ¶68).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of definitional scope: Can the term "Internet browser," conceived in an era of desktop web browsers, be construed to read on a modern, proprietary smartphone application? The outcome will determine whether infringement is limited to use of Defendant’s website or also includes use of its more common mobile app.
- A second key issue is one of architectural mapping: Does the accused Zmodo cloud platform embody the specific three-part "extranet" architecture of the patents, particularly the claimed "on-demand" connection initiated by the external server and the specific indirect communication path to in-home devices? The case will likely require a detailed factual analysis of the accused system's data flows.
- A critical question for damages will be the effect of the alleged pre-suit notice: The court will need to assess whether the January 2017 letter, which allegedly included a claim chart, was sufficient to establish actual knowledge and support the claim for willful infringement, which could expose the defendant to enhanced damages.