DCT
4:18-cv-00368
Ubiquitous Connectivity LP v. Central Security Group Nationwide Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ubiquitous Connectivity, LP (Texas)
- Defendant: Central Security Group - Nationwide, Inc., d/b/a "Alert 360" (Delaware)
- Plaintiff’s Counsel: Heninger Garrison Davis, LLC; Riggs, Abney, Neal, Turpen, Orbison & Lewis, P.C.
- Case Identification: 4:18-cv-00368, N.D. Okla., 05/19/2021
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has its principal place of business in the Northern District of Oklahoma.
- Core Dispute: Plaintiff alleges that Defendant’s smart home security and automation systems infringe patents related to on-demand, bidirectional communication between a remote cellular device and a local base control unit.
- Technical Context: The technology relates to the early integration of cellular devices (pre-smartphone era) with home automation systems, enabling remote monitoring and control over cellular networks.
- Key Procedural History: The patents-in-suit trace priority to a 2004 provisional application. According to USPTO records, both patents were the subject of Inter Partes Review (IPR) proceedings. The IPR certificate for the '935 Patent (IPR2019-01335) indicates that claims 1-11 and 13-22 were cancelled, which includes Claim 19 asserted in this complaint. The IPR certificate for the '655 Patent (IPR2019-01336) indicates that claims 1, 3-8, and 10-24 were cancelled, which includes Claim 1 asserted in this complaint. The First Amended Complaint does not reference these IPR outcomes.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-18 | Earliest Priority Date for Patents-in-Suit ('887 Provisional Application) |
| 2011-11-22 | U.S. Patent 8,064,935 Issued |
| 2017-03-21 | U.S. Patent 9,602,655 Issued |
| 2021-05-19 | First Amended Complaint Filed |
| 2021-09-21 | IPR Certificate Issued for U.S. Patent 9,602,655 |
| 2023-12-12 | IPR Certificate Issued for U.S. Patent 8,064,935 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent 8,064,935 - "Ubiquitous Connectivity and Control System for Remote Locations," issued November 22, 2011
The Invention Explained
- Problem Addressed: The patent describes prior art remote home control systems as cumbersome and not user-friendly, often requiring land-line access, complex telephone keypad inputs (DTMF tones), or "cryptic, hard-to-understand, digitized voice prompts" ('935 Patent, col. 2:40-50). Existing systems were also often confined to a limited geographic area ('935 Patent, col. 2:34-37).
- The Patented Solution: The invention proposes a system for "on-demand digital, private, and direct" communication between a remote control unit (e.g., a cellular phone) and a base control unit located in a home or other structure ('935 Patent, col. 3:9-13). This system uses the cellular network's short message service (SMS) to send commands from the remote unit to the base unit and to receive status information from the base unit, creating an "instant wireless connectivity" without the need for traditional dial-up connections ('935 Patent, col. 3:13-18). The system architecture is depicted in the patent's Figure 1, showing a master remote unit communicating with a base control unit via a cellular network ('935 Patent, Fig. 1).
- Technical Importance: The technology aimed to provide a more seamless and powerful method for global remote control and monitoring at a time before the widespread adoption of modern smartphones and dedicated mobile applications (Compl. ¶20, ¶28).
Key Claims at a Glance
- The complaint asserts independent Claim 19 (Compl. ¶43).
- Essential elements of Claim 19 include:
- A base unit interfaced with an environmental device.
- A transmitter associated with the base unit to send a first wireless message (current status) to a remote unit.
- A receiver associated with the base unit to receive a second wireless message (a command) from the remote unit.
- A controller to send the command to the environmental device.
- The complaint reserves the right to assert other claims (Compl. ¶43).
U.S. Patent 9,602,655 - "Ubiquitous Connectivity and Control System for Remote Locations," issued March 21, 2017
The Invention Explained
- Problem Addressed: As a continuation, this patent addresses the same general problems as the '935 Patent, focusing on the limitations of existing remote control systems that lacked sophisticated, automated, and bidirectional communication capabilities ('655 Patent, col. 2:46-55).
- The Patented Solution: The '655 Patent claims a base unit configured to communicate with a cellular remote unit over a communications network ('655 Patent, Claim 1). A key feature is the system's ability to use location information. The remote unit is configured to determine its position and whether it is outside a "geo-fence," and responsively transmit a notification ('655 Patent, Claim 1). The base unit can then change its operational characteristics based on the remote unit's location ('655 Patent, col. 8:29-34).
- Technical Importance: This patent builds on the prior work by introducing location-based automation (geo-fencing), an unconventional feature for the described time period, allowing for actions to be triggered automatically based on a user's proximity to the controlled location (Compl. ¶28).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶58).
- Essential elements of Claim 1 include:
- A base unit with a communication interface to an environmental device and a wireless interface for network communication.
- The wireless interface sends a first digital message (environmental information) to and receives a second digital message (a command) from a cellular remote unit.
- A microcontroller processes the command to generate a control instruction for the environmental device.
- The cellular remote unit is configured to determine its position, determine when it is outside a geo-fence, and transmit a notification in response.
- The complaint reserves the right to assert other claims (Compl. ¶58).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendant’s "2gig Go!Control" and "Alert 360/2gig GC2" branded wireless security systems, and the associated "CSG Alert 360" mobile application (collectively, the "Accused Products and Services") (Compl. ¶30-31).
Functionality and Market Context
The Accused Products provide home security and automation services, allowing users to remotely control and monitor their systems using a mobile app on a smartphone or other device (Compl. ¶32). The complaint provides a marketing screenshot from Defendant's website illustrating these capabilities, including home security, video monitoring, home automation, and energy management. (Compl. ¶32, Fig. 1). Functionality alleged in the complaint includes the ability to change system settings, view video, and "utilize geoservices to operate the system based on location" (Compl. ¶36). This includes using the GPS location of a user's mobile device "to set location based triggered events" (Compl. ¶37).
IV. Analysis of Infringement Allegations
'935 Patent Infringement Allegations
| Claim Element (from Independent Claim 19) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A communication system having wireless connectivity, the communication system comprising: a base unit operatively interfaced with an environmental device... | The complaint alleges the Accused Products form a "wirelessly controllable security system that incorporates a base unit (2gig-CP2) interfaced with an environmental device (security system and sensors)." | ¶43 | col. 15:9-13 |
| a transmitter associated with said base unit, and configured to send a first message to a remote unit having wireless connectivity... | The complaint alleges the Accused Products can send sensor readings and other information from the base unit to a user's mobile device via the Alert 360 app. | ¶38 | col. 15:14-19 |
| a receiver associated with said base unit, and configured to receive a second message from the remote unit... a wireless message including a command... | The complaint alleges the Accused Products receive commands from the Alert 360 app on a user's mobile device to control the system, such as arming or disarming sensors. | ¶38 | col. 15:20-23 |
| a controller operatively associated with the base unit and operatively connected with the environmental device, and configured to send the command to the environmental device. | The complaint alleges the base unit, upon receiving commands from the mobile app, controls the operation of the interfaced security system and sensors. A screenshot depicts remote control functionality. (Compl. ¶33, Fig. 2). | ¶31, ¶36, ¶38 | col. 15:24-28 |
- Identified Points of Contention:
- Legal Question: The primary issue is whether Claim 19 is enforceable, given that the USPTO's IPR certificate for the '935 Patent indicates it has been cancelled.
- Technical Question: Assuming the claim were valid, a question would be whether the integrated components of the accused "2gig-CP2" base unit can be discretely mapped to the claimed "transmitter," "receiver," and "controller" elements as distinct structures.
'655 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A base unit configured to communicate with an environmental device and to communicate with a cellular remote unit... comprising: a first communication interface configured to... send a control instruction to the environmental device; | The complaint alleges the accused base unit is interfaced with environmental devices like security sensors and is configured to control them based on commands received from the Alert 360 app. | ¶58 | col. 13:56-65 |
| a wireless communication interface configured to send a first message to the cellular remote unit... and to receive a second message from the cellular remote unit... | The complaint alleges the accused system sends information (e.g., sensor readings) to and receives commands from the Alert 360 app on a user's mobile device over a cellular/internet connection. | ¶38 | col. 14:1-5 |
| a microcontroller configured to process the second message, to provide the control instruction based on the command... | The complaint alleges the accused base unit processes commands from the mobile app to control system functions. | ¶38 | col. 14:12-16 |
| wherein the cellular remote unit is configured to determine position data... determine when the cellular remote unit is outside a geo-fence, [and]... transmit a notification... responsive to determining that the cellular remote unit is outside of the geo-fence. | The complaint alleges that the Accused Products "utilize geoservices to operate the system based on location" and use the "GPS location on a user's mobile device 'to set location based triggered events'." | ¶36, ¶37 | col. 14:20-29 |
- Identified Points of Contention:
- Legal Question: As with the '935 Patent, the central issue is whether Claim 1 is enforceable, given the IPR certificate for the '655 Patent indicates its cancellation.
- Scope Question: If the claim were valid, a key dispute would be whether the accused feature of setting "location based triggered events" meets the claim limitation of determining when a remote unit is "outside a geo-fence" and sending a notification "responsive to" that determination.
V. Key Claim Terms for Construction
For the '655 Patent
- The Term: "geo-fence"
- Context and Importance: This term is central to the novel aspect of Claim 1 of the '655 Patent. The infringement analysis will turn on whether the accused "location based triggered events" (Compl. ¶37) fall within the scope of a "geo-fence." Practitioners may focus on this term because its definition dictates whether any location-based trigger infringes, or only a specific type of boundary-crossing event.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims themselves do not explicitly define the shape or nature of the "geo-fence," which a party might argue allows for various forms of location-based rules.
- Evidence for a Narrower Interpretation: The specification describes the concept in the context of a "user-determined distance" from the base control unit. It states, "When the remote control unit travels a distance that exceeds the programmed distance from the base control unit, the remote control unit reports this information..." ('655 Patent, col. 8:58-62). This language suggests a specific implementation based on a radial boundary from a central point, which could support a narrower construction than any generic "location based event."
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement for both patents. It asserts that Defendant encourages and instructs its customers on how to use the Accused Products in an infringing manner through "information brochures, promotional material, and contact information" and other guidance available on its website (Compl. ¶44, ¶46, ¶59, ¶61).
- Willful Infringement: The complaint alleges Defendant has knowledge of the patents "as early as the filing of this complaint" and continues to infringe despite this knowledge, forming a basis for post-filing willfulness (Compl. ¶45, ¶60). There are no allegations of pre-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A dispositive threshold question for the court will be one of legal standing and enforceability: Can the Plaintiff maintain an action for infringement on U.S. Patent 8,064,935, Claim 19, and U.S. Patent 9,602,655, Claim 1, when USPTO Inter Partes Review certificates appear to indicate that both of these asserted claims have been cancelled?
- Should the asserted claims be deemed enforceable, a central issue will be one of definitional scope: Can the term "geo-fence" from the '655 Patent, which the specification describes as a "user-determined distance" from a base unit, be construed to read on the accused system's more general feature of setting "location based triggered events"?
- A key evidentiary question will be one of technical mapping: Does the complaint provide sufficient factual detail to plausibly map the integrated hardware and software components of the modern "2gig Go!Control" system onto the discrete "transmitter," "receiver," and "controller" elements recited in the claims, which were drafted in the context of pre-smartphone era technology?