DCT
1:19-cv-05982
Pilot Inc v. Schumacher Electric Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pilot, Inc. (California)
- Defendant: Schumacher Electric Corporation (Illinois)
- Plaintiff’s Counsel: Bradford, Ltd; Sheridan Ross P.C.
- Case Identification: 1:19-cv-05982, N.D. Ill., 09/06/2019
- Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because Defendant resides, maintains a principal place of business, transacts business, and committed alleged acts of patent infringement in the District.
- Core Dispute: Plaintiff alleges that Defendant’s "Red Fuel" line of portable lithium-ion jump starters infringes a patent related to safety control circuitry for such devices.
- Technical Context: The technology concerns safety systems for portable jump starters, which use microcontrollers to verify proper connection and battery conditions before allowing a high-current discharge to a vehicle's battery.
- Key Procedural History: The complaint asserts U.S. Patent No. 10,046,653 ('653 Patent). Subsequent to the complaint's filing, Inter Partes Review (IPR) proceedings (IPR2021-00777, IPR2021-01232) were initiated. An IPR certificate issued on October 1, 2024, cancelled all claims asserted in this complaint (Claims 7-11 and 17-20). The IPR found Claim 3 patentable, but a subsequent disclaimer filed by the patent owner on May 22, 2024, disclaimed this remaining claim.
Case Timeline
| Date | Event |
|---|---|
| 2014-04-28 | Earliest Priority Date for '653 Patent (from CN 201420212173) |
| 2014-09-01 | Plaintiff's first product delivery to major customer |
| 2016-11-18 | '653 Patent Application Filed |
| 2018-08-14 | '653 Patent Issued |
| 2019-09-06 | Complaint Filed |
| 2021-04-07 | IPR2021-00777 Filed against '653 Patent |
| 2024-05-22 | Patent Owner Disclaims Claim 3 of the '653 Patent |
| 2024-10-01 | IPR Certificate Issued, Cancelling Asserted Claims of '653 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,046,653 - “Automobile Charger,” August 14, 2018
The Invention Explained
- Problem Addressed: The patent's background describes the risks associated with conventional automobile chargers, which may not automatically detect whether a load (e.g., a car battery) is connected, if the connection polarity is reversed, or if the battery's state is suitable for receiving a high-current charge (ʼ653 Patent, col. 1:11-28).
- The Patented Solution: The invention is a charging device that uses a microcontroller as a central processor to manage safety functions ('653 Patent, Fig. 1). It takes inputs from a "battery level detector" (to check the power source) and a "load detector" (to check the connection to the car battery) and generates an output signal to "switching circuitry," which then either connects or disconnects the power source from the load, thereby preventing dangerous conditions like reverse polarity connections or over-discharge ('653 Patent, col. 5:60-col. 6:17; Abstract).
- Technical Importance: This technology was developed to address retailer and consumer safety concerns that were limiting the market adoption of portable lithium-ion jump starters (Compl. ¶9-11).
Key Claims at a Glance
- The complaint asserts independent claims 7 (a device) and 17 (a method) (Compl. ¶87).
- Independent Claim 7, as asserted, requires:
- a battery level detector to detect a level of a first battery;
- a load detector to detect a type of connection of a load;
- a microcontroller to generate an output signal based on the level of the first battery and the type of connection of the load; and
- switching circuitry to selectively connect the first battery to the load based on the output signal.
- Independent Claim 17, as asserted, is a method claim reciting steps that mirror the functions of the device elements in Claim 7.
- The complaint also asserts dependent claims 8-11 and 18-20 (Compl. ¶87). As noted, all asserted claims have since been cancelled by IPR proceedings ('653 Patent, IPR Certificate, p. 2).
III. The Accused Instrumentality
- Product Identification: The "Accused Red Fuel Jump Starters," which include numerous specific models such as the SL65, SL1398, SL1, SLM1, and others listed in Table 1 of the complaint (Compl. ¶32, p. 10-14).
- Functionality and Market Context: The accused products are portable lithium jump starters sold for consumer use (Compl. ¶30). The complaint alleges they incorporate the patented safety technology either within a "Safe Smart Cable" dongle attached to the jumper cables or integrated directly into the main housing of the power pack (Compl. ¶31). This technology is alleged to detect various connection states (e.g., proper connection, reverse polarity, short circuit) and use LED lights and alarms to communicate status to the user, only permitting a jump start when conditions are safe (Compl. ¶43-46, ¶66-69). The complaint alleges Schumacher branded these features as "Safe Smart Cables" in its marketing to compete with Pilot's products (Compl. p. 8).
IV. Analysis of Infringement Allegations
'653 Patent Infringement Allegations (based on cancelled Claim 7)
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a battery level detector to detect a level of a first battery; | The accused devices include circuitry to check the level of the internal lithium battery. This is evidenced by an LED display on the SL65 showing a percentage charge or a green LED on the SL1398 "Safe Smart Clamp" illuminating to indicate a sufficient charge level (Compl. p. 16). | ¶40-41 | col. 6:8-10 |
| a load detector to detect a type of connection of a load; | The devices' "Safe Smart Cables" or internal circuitry detect the connection to the vehicle battery. This is evidenced by user manual instructions and LED light behavior indicating different connection types, such as "Reverse polarity protection" or "Short circuit protection" (Compl. p. 17). | ¶42-43 | col. 6:11-14 |
| a microcontroller to generate an output signal based on the level of the first battery and the type of connection of the load; and | A microcontroller on the devices' circuit boards receives inputs from the battery and load detectors and generates an output signal. The complaint provides an annotated teardown photograph of the SL65 circuit board identifying the microcontroller and its function (Compl. p. 19). | ¶52 | col. 5:46-52 |
| switching circuitry to selectively connect the first battery to the load based on the output signal. | The devices use a relay as switching circuitry, which receives the signal from the microcontroller to physically connect or disconnect the power. The complaint includes an annotated photograph of the SL1398's internal relay, identifying it as the switching circuitry that connects the battery to the load (Compl. p. 20). | ¶53 | col. 6:35-37 |
- Identified Points of Contention:
- Technical Questions: A key question, had the claims survived, would be whether the logic implemented in the accused devices' microcontrollers performs the specific functions recited in the dependent claims. For example, Claim 11 requires generating a signal to connect if the load is properly connected and the battery level is above a threshold. The complaint asserts this is met by alleging the green "ready" light only appears when conditions are correct (Compl. ¶56), but the specific internal logic and thresholds would be a matter for discovery.
- Scope Questions: The term "type of connection" is central. The complaint's theory relies on this term covering various states like proper polarity, reverse polarity, short circuit, and low voltage (Compl. ¶44-45). A dispute could arise over whether the claim language, as supported by the specification, is broad enough to encompass this full range of detected conditions, or if it implies a more limited set of "types."
V. Key Claim Terms for Construction
The Term: "load detector"
- Context and Importance: This term is critical because the infringement theory rests on the accused devices detecting not just the presence of a load, but the type of connection. The functionality of this detector defines the scope of what is being monitored. Practitioners may focus on whether this term requires a single, dedicated component or can be a distributed function within the device's circuitry.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the "load detection module" as detecting "whether the load module is correctly connected" ('653 Patent, col. 5:64-67). This functional language may support an interpretation that covers any circuitry performing this detection function, regardless of its specific implementation.
- Evidence for a Narrower Interpretation: Figure 1 presents the "load detection module (5)" as a distinct block in the schematic, separate from the "microcontroller (2)" and the "load module (6)". This could support an argument that the "load detector" must be a structurally distinct element from the microcontroller itself or the load it is monitoring.
The Term: "type of connection"
- Context and Importance: The infringement case hinges on this term encompassing conditions like "proper connection," "improper connection," "polarity reversal," and "disconnection" (Compl. ¶48-51). The breadth of this term determines how many different conditions the accused device must be capable of detecting to infringe.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Dependent Claim 8 states the "type of connection" includes "a proper connection of the load and an improper connection of the load," and Claim 10 further specifies an improper connection can be a "polarity reversal" or a "disconnection" ('653 Patent, col. 7:36-col. 8:10). This language explicitly supports a broad reading.
- Evidence for a Narrower Interpretation: The primary problem described in the patent's summary is simply detecting "whether the load is connected" correctly or not ('653 Patent, col. 6:11-17). An argument could be made that the core invention is a binary check (correct/incorrect) and that the various sub-types of "improper" connections are not essential to the term's meaning in the independent claim.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain a specific count for indirect infringement. However, it alleges that Defendant's owner's manuals instruct users on how to connect and operate the devices in a manner that performs the patented method, which could form the basis for an inducement claim (Compl. ¶42, ¶66).
- Willful Infringement: Willfulness is alleged based on Defendant's purported awareness of Plaintiff's patented products "on the shelf at Lowes" (Compl. ¶22). The complaint further alleges that infringement has been and continues to be willful at least upon service of the complaint (Compl. ¶94).
VII. Analyst’s Conclusion: Key Questions for the Case
Given the post-filing cancellation of all asserted claims via IPR and the disclaimer of the sole surviving claim, the central question for this case is procedural rather than technical:
- A core issue is one of viability: As all asserted claims of the '653 Patent have been cancelled or disclaimed subsequent to the filing of the complaint, on what basis can the lawsuit proceed? The case as pled appears to lack an enforceable patent right.
Assuming for analytical purposes that the claims were still valid, the key questions would have been:
- A key issue would be one of claim scope: Can the term "load detector", described as a distinct module in the patent's figures, be construed to read on the integrated safety and monitoring circuitry of the accused devices?
- A central evidentiary question would be one of functional mapping: Does the operational logic of the accused devices' microcontrollers—as evidenced by user-facing indicators and teardowns—perform the specific conditional steps required by the claims (e.g., connecting only if the battery is above a threshold and the load is properly connected), or is there a material difference in the implemented safety protocols?