DCT
1:19-cv-00009
Nexus Tech Inc v. Unltd Power Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nexus Technologies, Inc., Daniel Conti, and Benjamin Bomer (North Carolina)
- Defendant: Unlimited Power Ltd. (North Carolina) and Christopher J. Petrella (South Carolina)
- Plaintiff’s Counsel: Womble Bond Dickinson (US) LLP
- Case Identification: 1:19-cv-00009, W.D.N.C., 01/09/2019
- Venue Allegations: Venue is alleged to be proper based on Defendant Unlimited Power being a North Carolina corporation and because many of the events and alleged wrongful acts occurred in the district, including at Plaintiff Nexus’s headquarters.
- Core Dispute: Plaintiffs allege that their employees conceived of the inventions claimed in two utility patents and two design patents, and that Defendant Petrella wrongfully filed for and obtained these patents naming himself as the sole inventor. The action seeks correction of inventorship under 35 U.S.C. § 256 and assignment of the patents.
- Technical Context: The technology relates to portable renewable energy power systems, typically configured in a briefcase-style enclosure, which integrate solar panels, battery storage, and power converters for off-grid or backup use.
- Key Procedural History: The complaint alleges that Plaintiffs developed and disclosed detailed technical and design concepts for a portable power system to Defendants under an expectation of confidentiality and future business. Plaintiffs allege that Defendants then used this information to file for the patents-in-suit without notice and without naming the proper inventors. The complaint notes a discrepancy in the patent numbers listed in the body versus the prayer for relief for one of the design patents, referring to U.S. Patent No. D807,816 in the counts but U.S. Patent No. D807,806 in the prayer for relief. The counts appear to govern the specific claims.
Case Timeline
| Date | Event |
|---|---|
| 2013-01-XX | Initial meeting between Plaintiff Conti and Defendant Petrella (exact day not specified) |
| 2013-03-05 | Plaintiff Nexus sends "PREPS Development Proposal" to Defendant's agent |
| 2014-02-24 | Earliest Priority Date ('903 & '213 Patents); Provisional Application '378 filed |
| 2016-09-29 | Applications filed for D807,816 and D815,030 Design Patents |
| 2018-01-09 | U.S. Patent No. 9,865,903 Issues |
| 2018-01-16 | U.S. Design Patent No. D807,816 Issues |
| 2018-04-10 | U.S. Design Patent No. D815,030 Issues |
| 2018-09-25 | U.S. Patent No. 10,084,213 Issues |
| 2019-01-09 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,865,903 - "Portable Renewable Energy Power System"
Issued January 9, 2018.
The Invention Explained
- Problem Addressed: The patent describes the need for portable power sources for use in remote locations or backup situations where conventional power sources are unavailable ( '903 Patent, col. 1:43-48).
- The Patented Solution: The invention is a self-contained power system housed in a briefcase-style enclosure. It integrates a primary solar panel, a second deployable solar panel, a battery module, AC/DC and DC/AC converters, and a control module. The control module manages various operational configurations, such as charging the battery from solar or an external AC source, and powering devices from the battery, solar panels, or a combination thereof ('903 Patent, Abstract; Fig. 4).
- Technical Importance: This integration of multiple power sources, storage, and conversion in a single portable unit provided a versatile solution for off-grid power needs.
Key Claims at a Glance
- The complaint focuses on the subject matter of independent claim 1 (Compl. ¶29).
- Claim 1 Essential Elements:
- A first solar panel attached to an enclosure
- A second, hingeably attached and deployable solar panel
- An open position (second panel exposed) and a closed position (second panel stored)
- A battery module, AC/DC converter, and DC/AC converter
- A control module with a processor programmed to configure the system into multiple modes (external charge, solar charge, battery only, solar only, and solar/battery combination)
- A handle attached to the enclosure
- The complaint does not explicitly reserve the right to assert other claims but seeks correction of inventorship for the patent as a whole.
U.S. Patent No. 10,084,213 - "Portable Renewable Energy Power System"
Issued September 25, 2018.
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the '903 Patent, the '213 patent addresses the same problem of providing a convenient, self-contained source of portable power ('213 Patent, col. 1:13-17).
- The Patented Solution: The invention is a portable power system in an enclosure with two sides hinged together. It contains deployable solar panels, a battery, power converters, and a control module that manages power flow between the components based on different operational configurations ('213 Patent, Abstract; col. 9:1-29). The system is designed for ergonomic use and to withstand the elements ('213 Patent, col. 4:16-28).
- Technical Importance: The claimed invention provides a specific architecture for a dual-panel, configurable portable solar generator.
Key Claims at a Glance
- The complaint focuses on the subject matter of independent claim 1 (Compl. ¶30).
- Claim 1 Essential Elements:
- An enclosure with a first side hingeably attached to a second side
- A deployed position where first and second solar panels are exposed
- An undeployed position where the panels are received within the enclosure
- A battery module and AC/DC and DC/AC converters
- A control module programmed for multiple configurations, including external charge, solar charge, and a solar/battery combination for outputting AC and DC power
- The complaint also asserts inventorship of the subject matter of independent claim 5, which claims a similar system with slightly different configurations.
U.S. Design Patent No. D807,816 - "Portable renewable energy generator"
Issued January 16, 2018.
- Technology Synopsis: This design patent protects the ornamental, non-functional, aesthetic appearance of a portable renewable energy generator. The design features a ruggedized, briefcase-like enclosure with specific surface details.
- Asserted Claims: Claim 1: "The ornamental design for a portable renewable energy generator, as shown and described."
- Accused Features: The complaint alleges that the claimed design itself was conceived by Plaintiff Benjamin Bomer and conveyed to Defendant Petrella through design images in 2015 and 2016 (Compl. ¶¶ 24-25, 47-49).
U.S. Design Patent No. D815,030 - "Portable renewable energy generator"
Issued April 10, 2018.
- Technology Synopsis: This design patent protects the ornamental design for a different embodiment of a portable renewable energy generator. The design shows a briefcase-style case with a distinct cross-shaped surface pattern.
- Asserted Claims: Claim 1: "The ornamental design for a portable renewable energy generator, as shown and described."
- Accused Features: As with the '816 Patent, the complaint alleges that this specific ornamental design was conceived by Plaintiff Benjamin Bomer and was derived from images provided to the Defendant (Compl. ¶¶ 24-25, 54-56).
III. Analysis of Inventorship Allegations
No probative visual evidence provided in complaint.
The core of the dispute is not product infringement but a claim for correction of inventorship. The complaint alleges that Plaintiffs conceived of the key elements of the inventions claimed in the '903 and '213 patents.
'903 Patent Inventorship Allegations
| Claim Element (from Independent Claim 1) | Alleged Conception by Plaintiffs | Complaint Citation | Patent Citation |
|---|---|---|---|
| a second solar panel hingeably attached to the enclosure and deployable away from a solar cavity defined in the enclosure | The complaint alleges Plaintiff Conti conceived of this element as part of the Nexus PREPS proposal. | ¶29 | col. 9:8-11 |
| an open position wherein the second solar panel is exposed and extends out from the enclosure | The complaint alleges Plaintiff Conti conceived of this element. | ¶29 | col. 9:12-14 |
| a closed position wherein the second solar panel is stored and received within the enclosure... | The complaint alleges Plaintiff Conti conceived of this element. | ¶29 | col. 9:1-4 |
| a control module comprising at least one processor, wherein the control module is programmed to configure the system among a plurality of configurations including: a solar charge configuration... a solar only configuration... and a solar and battery configuration... | The complaint alleges Plaintiff Conti conceived of this control scheme and its configurations. | ¶29 | col. 9:21-38 |
| a handle attached to the enclosure for carrying the system, wherein the battery module, the AC/DC converter, the DC/AC converter and the control module are positioned within the enclosure | The complaint alleges Plaintiff Conti conceived of the overall integrated, portable design. | ¶29 | col. 9:39-43 |
'213 Patent Inventorship Allegations
| Claim Element (from Independent Claim 1) | Alleged Conception by Plaintiffs | Complaint Citation | Patent Citation |
|---|---|---|---|
| an enclosure having a first side hingably attached to a second side carried by the enclosure | The complaint alleges Plaintiff Conti conceived of this hinged, briefcase-style design. | ¶30 | col. 8:66-67 |
| a deployed position wherein a first solar panel and a second solar panel are exposed and face away from the enclosure | The complaint alleges Plaintiff Conti conceived of this element. | ¶30 | col. 9:1-3 |
| an undeployed position wherein the first solar panel and the second solar panel are received within the enclosure... | The complaint alleges Plaintiff Conti conceived of this element. | ¶30 | col. 9:4-7 |
| a control module programmed to configure the system among a plurality of configurations including: a solar charge configuration... and a solar and battery configuration... | The complaint alleges Plaintiff Conti conceived of this control scheme and its configurations. | ¶30 | col. 9:12-29 |
- Identified Points of Contention:
- Factual Question: The central dispute is factual: What information was contained in the "PREPS Development Proposal" (Compl. ¶17) and the subsequent design images (Compl. ¶24), and does that information prove "conception" of the specific limitations recited in the patent claims by Mr. Conti and Mr. Bomer?
- Legal Question: The court will need to determine whether the alleged contributions by Plaintiffs rise to the level of co-inventorship. This raises the question of whether Plaintiffs contributed to the definitive and permanent idea of the complete and operative invention as it was thereafter applied in practice, or merely contributed to the general concept or reduction to practice.
IV. Key Claim Terms for Construction
In an inventorship dispute, claim construction is relevant to define the boundaries of what was conceived.
- The Term: "control module... programmed to configure the system" ('903 Patent, Claim 1; '213 Patent, Claim 1)
- Context and Importance: This term is central to the functionality of the invention. The dispute may turn on whether Plaintiff Conti's alleged contribution was merely a high-level idea of different modes, or a sufficiently detailed conception of the programmable logic and configurations as claimed. Practitioners may focus on this term because inventorship requires conception of the claimed subject matter, and the scope of this "programmed" module defines a large part of that subject matter.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the configurations in functional terms (e.g., "battery-only configuration," "solar-only configuration"), which could support an interpretation that conception of the functional modes is sufficient, regardless of the specific software or hardware implementation ('903 Patent, col. 4:1-18).
- Evidence for a Narrower Interpretation: The specification discloses a specific "CORTEX M-3 microprocessor" and an "embedded microcontroller architecture" ('903 Patent, col. 3:30-34). A party could argue that conception required envisioning such a specific programmable controller, not just the abstract idea of switching between power sources.
V. Other Allegations
- Willful Infringement: While not a traditional infringement case, the complaint alleges an equivalent level of scienter regarding the patent filings. It claims Defendant Petrella engaged in "surreptitious" patent applications (Compl. ¶¶ 21-27), intentionally concealed the filings from Plaintiffs, and altered documents from Plaintiffs' proposal to conceal their origin from the PTO (Compl. ¶22). These allegations of intentional deception and fraud are central to Plaintiffs' claims for conversion and unfair trade practices.
VI. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Can Plaintiffs produce sufficient corroborating evidence, such as the alleged "PREPS Proposal" and design documents, to demonstrate that they conceived of the complete and operative invention as defined by the patent claims, and communicated that conception to Defendant Petrella?
- A second key issue will be the legal standard for inventorship: The case will turn on whether Plaintiffs' alleged contributions meet the legal threshold for co-inventorship. Specifically, did they contribute significantly to the "conception" of the claimed inventions, or were their contributions limited to well-known concepts, unpatentable ideas, or simply assisting in the reduction to practice of an invention already conceived by Defendant Petrella?
- A final question relates to remedy: If inventorship is corrected, the court will then have to address the related state law claims and Plaintiffs' request for assignment of the patents, which will depend on the nature of the relationship and any implied obligations between the parties at the time the inventions were disclosed.