Karamelion LLC v. Intermatic Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Karamelion LLC (Texas)
  • Defendant: Intermatic Incorporated (Delaware)
  • Plaintiff’s Counsel: Direction IP Law
• Case Identification: 1:20-cv-00639, N.D. Ill., 02/18/2020
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a place of business in the Northern District of Illinois and has committed acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s Z-Wave-based pool and spa control systems infringe two patents related to wireless mesh networking for remote appliance control and monitoring.
• Technical Context: The technology involves creating low-power, multi-hop wireless networks to control distributed devices in a building, a foundational concept for the modern smart home and building automation market.
• Key Procedural History: U.S. Patent 6,873,245 is identified as a continuation-in-part of the application that led to U.S. Patent 6,275,166. The complaint notes that during prosecution, the inventor distinguished the invention from prior art that was expensive and unreliable. Subsequent to the complaint's filing, an ex parte reexamination certificate for the ’166 Patent was issued, cancelling all claims (1-17), a development that may significantly impact the litigation concerning that patent.

Case Timeline

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

U.S. Patent No. 6,275,166 - RF Remote Appliance Control/Monitoring System, issued August 14, 2001

The Invention Explained

• Problem Addressed: The patent describes the high expense and difficulty of installing and modifying wired control systems for building appliances (e.g., HVAC, lighting). It also notes that existing wireless solutions were often prohibitively expensive due to range limitations that necessitated higher power, regulatory licensing, and susceptibility to interference (Compl. ¶11-12; ’166 Patent, col. 1:14-39).
• The Patented Solution: The invention proposes a system of low-power, short-range wireless controllers that also function as "relay units." These units form a network where communications can be relayed between units to reach a "headend control computer" or a destination appliance that is beyond the direct range of the originating device. This multi-hop relay capability aims to create a cost-effective and robust wireless control network without requiring high-power transmitters (Compl. ¶13; ’166 Patent, col. 1:42-46). Figure 6 of the patent illustrates this process, showing a signal from a headend computer (H) passing through relay units (R1, R2) to reach a destination unit (D) (’166 Patent, Fig. 6).
• Technical Importance: This approach sought to lower the barrier to entry for building automation by using a mesh-like network of inexpensive, low-power radios to circumvent the cost and installation complexity of both wired systems and long-range wireless systems (’166 Patent, col. 1:32-34).

Key Claims at a Glance

• The complaint asserts independent method claim 16 (Compl. ¶18).
• Essential elements of claim 16 include:
  • Providing a "headend computer" with a main radio transceiver.
  • Providing a distributed array of "relay units," each with a satellite transceiver and unique serial number, with some interfaced to appliances.
  • Signaling from the headend computer the addresses of at least three relay units (a destination, a first relay, and a second relay) and a control signal.
  • Decoding the first relay address at the first relay unit.
  • Transmitting the control signal, second relay address, and destination address from the first relay unit.
  • Decoding the destination address at the destination relay unit.
  • Feeding the control signal to the appliance from the destination unit.

U.S. Patent No. 6,873,245 - RF Remote Appliance Control/Monitoring Network, issued March 29, 2005

The Invention Explained

• Problem Addressed: As a continuation-in-part, the patent addresses the same deficiencies in prior art systems as the ’166 Patent, including excessive expense, insufficient bandwidth, unreliability, and difficulty of use (Compl. ¶29; ’245 Patent, col. 2:38-52).
• The Patented Solution: The invention describes an "appliance controller" that exists within a distributed system of relay units. The controller contains program instructions that enable it not only to manage its own appliance and communicate with an external device, but also to act as an intermediary for communications directed between other relay units in the network. This dual functionality as both an endpoint and a router is central to the patented solution (’245 Patent, col. 2:1-24).
• Technical Importance: The invention refines the concept of a multi-functional node in a wireless control network, where each device contributes to the overall network integrity by relaying messages for others.

Key Claims at a Glance

• The complaint asserts independent apparatus claim 1 (Compl. ¶30).
• Essential elements of claim 1 include:
  • A low power satellite radio transceiver, an appliance interface, and a microcomputer.
  • "First program instructions" for detecting and responding to communications directed to the appliance controller itself.
  • "Second program instructions" for detecting, transmitting, and handling replies for communications directed between other relay units.
  • A requirement that "at least some of the relay units communicate with others of the relay units by relay communications using at least two others of the relay units," describing multi-hop communication.

III. The Accused Instrumentality

Product Identification

The "Accused Instrumentality" comprises Intermatic’s Z-Wave based products, including the "MultiWave System Controller," "Z-Wave Dimmers," "temperature sensor receivers," and other Z-Wave supported devices (Compl. ¶18, ¶30). The complaint includes a screenshot of the Intermatic "MultiWave Pool & Spa Control System" (Compl. p. 9).

Functionality and Market Context

The accused products create a wireless mesh network using the Z-Wave protocol to control pool and spa equipment like pumps, lights, and heaters (Compl. ¶19). The complaint alleges that the system relies on individual Z-Wave devices acting as repeaters to extend the network's range. A screenshot from an Intermatic document states, "Each Z-Wave enabled device is designed to act as a repeater, re-transmitting the RF signal around obstacles and radio dead spots" (Compl. p. 10). This repeater functionality is alleged to be the core infringing activity.

IV. Analysis of Infringement Allegations

’166 Patent Infringement Allegations

’245 Patent Infringement Allegations

• Identified Points of Contention:
  • Patent Validity: The cancellation of all claims of the ’166 patent in reexamination presents a dispositive issue for Count I. The patent is unenforceable.
  • Technical Questions: For the ’245 patent, a central dispute may concern whether the standardized operation of the Z-Wave protocol perfectly aligns with the specific functional sequences described in the "first" and "second" program instruction limitations of claim 1. The defense may argue that the actual Z-Wave routing and acknowledgement logic differs materially from the claimed steps.
  • Scope Questions: The interpretation of "headend computer" in the ’166 patent raises the question of whether the accused MultiWave Controller functions as a centralized master, as the patent may imply, or as a peer in a more distributed Z-Wave network.

V. Key Claim Terms for Construction

• The Term: "relay unit"

• Context and Importance: This term is foundational to both asserted patents, defining the nodes that create the multi-hop network. Its construction will determine which of the accused Z-Wave devices can be considered an embodiment of the claimed invention.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification broadly describes the invention as using a "distributed array of low power (short range) wireless controllers that are also functional as relay units" (’166 Patent, col. 1:42-44), suggesting any device with this dual capability could qualify.
  • Evidence for a Narrower Interpretation: The patent frequently refers to the "Universal Relay Unit" or "URU" and depicts it with specific components for controlling building appliances like HVAC systems (’166 Patent, Fig. 3, col. 4:52-53). A party could argue the term is limited to such integrated appliance management stations, not any generic network repeater.

• The Term: "first program instructions" and "second program instructions" (’245 Patent)

• Context and Importance: Claim 1 of the ’245 patent separately delineates two sets of software instructions with distinct functions (handling own communications vs. relaying others' communications). The infringement analysis depends on whether the accused Z-Wave device firmware can be cleanly partitioned into these two claimed sets.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A plaintiff may argue that these terms simply describe the two fundamental capabilities of any mesh network node—acting as a destination and acting as a router—and that any firmware accomplishing these tasks meets the limitation.
  • Evidence for a Narrower Interpretation: A defendant may argue that the claim requires two structurally or logically distinct sets of code, and that the Z-Wave protocol's integrated handling of all packet types does not map onto this claimed separation of instructions. The patent does not appear to provide an explicit definition separating these instructions in the specification, leaving it open to interpretation based on prosecution history and expert testimony.

VI. Other Allegations

• Indirect Infringement: The complaint does not plead separate counts for indirect infringement. However, it alleges facts that could support such a claim, such as Defendant providing products "designed to act as a repeater" and documentation that instructs users on how to build the allegedly infringing network (Compl. p. 10).
• Willful Infringement: The complaint does not contain an allegation of willful infringement. It alleges only constructive notice by operation of law (Compl. ¶38).

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

• Enforceability of the ’166 Patent: The primary and likely dispositive question for Count I is its viability following the cancellation of all claims of the ’166 Patent during ex parte reexamination.
• Technical Mapping for the ’245 Patent: A core evidentiary question will be one of functional correspondence: does the accused Z-Wave protocol's logic for routing, acknowledging, and handling messages map directly onto the separately defined "first program instructions" and "second program instructions" as required by claim 1, or is there a fundamental mismatch in their technical operation?
• Claim Scope and the Doctrine of Equivalents: A key legal question will be one of definitional scope: can terms like "headend computer" and "relay unit," which are described in the patent with reference to specific "URU" embodiments, be construed broadly enough to read on the accused Z-Wave controller and peer nodes? If not, the case may turn on whether the accused system is equivalent to the claimed invention.