Kortek Industries Pty Ltd v. Beijing Roborock Technology Co Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Kortek Industries Pty Ltd. (Australia)
  • Defendant: Beijing Roborock Technology Co. Ltd. (China)
  • Plaintiff’s Counsel: Brown Rudnick LLP
• Case Identification: Kortek Industries Pty Ltd v. Beijing Roborock Technology Co Ltd, 2:25-cv-00311, E.D. Tex., 03/21/2025
• Venue Allegations: Plaintiff alleges venue is proper because Defendant is a foreign corporation, making venue appropriate in any judicial district under 28 U.S.C. § 1391(c)(3).
• Core Dispute: Plaintiff alleges that Defendant’s WiFi-enabled robotic vacuum cleaners and mops infringe five U.S. patents related to wireless power and automation control systems.
• Technical Context: The technology resides in the Internet of Things (IoT) field, specifically addressing methods for establishing wireless communication between a controller (like a smartphone) and a device to control its power and functions.
• Key Procedural History: The complaint does not allege any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.

Case Timeline

Date	Event
2011-02-16	Earliest Priority Date for ’377 and ’869 Patents
2011-11-07	Earliest Priority Date for ’427, ’313, and ’535 Patents
2016-10-11	’377 Patent Issued
2017-03-07	’427 Patent Issued
2019-10-01	’869 Patent Issued
2020-12-08	’313 Patent Issued
2023-02-07	’535 Patent Issued
2025-03-21	Complaint Filing Date

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

U.S. Patent No. 10,429,869 - "Wireless power, light and automation control"

Issued October 1, 2019 (’869 Patent)

The Invention Explained

• Problem Addressed: Conventional home automation systems using Wi-Fi rely on a central wireless Access Point (AP). This creates a single point of failure; if the AP is disabled, the entire automation system fails. Furthermore, high traffic on the network can create data latency that inhibits the performance of automation functions (’869 Patent, col. 1:46-55).
• The Patented Solution: The invention proposes a decentralized system where a power control unit communicates directly with a controller (e.g., a smartphone) using a peer-to-peer wireless link, such as Wi-Fi Direct or Bluetooth (’869 Patent, col. 2:30-34). This eliminates the dependency on a central AP for local control. To maintain compatibility, the power control unit is described as being able to "simulate a network access point," allowing it to establish a direct connection even with legacy Wi-Fi devices that do not natively support peer-to-peer protocols (’869 Patent, col. 3:24-29). Figure 2 illustrates this peer-to-peer architecture with a "Group Owner" (the power control unit) communicating directly with "Peer-to-Peer Clients" (a tablet and smartphone) (’869 Patent, Fig. 2).
• Technical Importance: This approach improves the potential reliability of local smart device control by removing the central AP as a single point of failure for device-to-controller communications.

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶64).
• Essential elements of Claim 1 include:
  • A power control device for controlling an electrical apparatus.
  • A microprocessor with memory and a power control circuit to vary the supply of electricity.
  • A wireless communications transceiver for two-way, peer-to-peer communication.
  • The microprocessor is configured to always send a discovery message without passing through a wireless router or access point to initiate and open a peer-to-peer link.
  • The wireless transceiver is configured to operate by simulating a network access point to establish the link.
• The complaint reserves the right to assert additional claims (Compl. ¶28, ¶64).

U.S. Patent No. 10,862,313 - "Adaptable wireless power, light and automation system"

Issued December 8, 2020 (’313 Patent)

The Invention Explained

• Problem Addressed: Wireless automation systems present a trade-off between security and convenience. A standard Wi-Fi Local Area Network (WLAN) connected to the internet allows for remote control from anywhere but is vulnerable to external attacks. A direct peer-to-peer link is more secure due to its proximity requirements but lacks remote accessibility (’313 Patent, col. 2:5-44).
• The Patented Solution: The patent describes a power control unit with adaptable communication modes. It contains a wireless control module that can operate in a first, secure "peer-to-peer" mode (e.g., Wi-Fi Direct) for local control. Upon receiving instructions from a personal controller, it can change to a second "non-peer-to-peer" mode to communicate with a network access point in a standard WLAN, enabling remote access (’313 Patent, Claim 1). This dual-mode functionality provides users with the flexibility to choose between high-security local control and convenient remote access (’313 Patent, col. 18:48-55).
• Technical Importance: The invention provides a single-device solution that addresses the divergent needs for both secure, localized IoT device control and convenient, internet-enabled remote access.

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶52).
• Essential elements of Claim 1 include:
  • A controller for controlling a light.
  • A wireless control module with a microcontroller and radio transceiver.
  • The microcontroller is configured to operate in a first mode using a peer-to-peer communications standard.
  • The microcontroller is configured to operate in a second mode using a non-peer-to-peer communications standard (e.g., WLAN).
  • The microcontroller is configured to change from the first mode to the second mode upon receiving instructions from the personal controller.
  • A power control circuit to vary the supply of electricity to the light based on instructions.
• The complaint reserves the right to assert additional claims (Compl. ¶52).

U.S. Patent No. 9,465,377

• Patent Identification: U.S. Patent No. 9,465,377, "Wireless power, light and automation control," issued October 11, 2016 ('377 Patent).
• Technology Synopsis: This patent, the parent of the ’869 Patent, discloses a power control device that uses a peer-to-peer wireless link to communicate with a controller like a smartphone. The system is designed to overcome the limitations of conventional Wi-Fi networks by eliminating the need for a central access point, with the power control device itself capable of simulating an access point to connect with other devices directly (’377 Patent, Abstract).
• Asserted Claims: At least Claim 1 (Compl. ¶28).
• Accused Features: The functionality of Roborock’s WiFi-enabled products to establish a direct wireless connection for control and configuration (Compl. ¶20, ¶28).

U.S. Patent No. 9,590,427

• Patent Identification: U.S. Patent No. 9,590,427, "Adaptable wireless power, light and automation system," issued March 7, 2017 ('427 Patent).
• Technology Synopsis: This patent, related to the ’313 Patent, describes a power control unit that can communicate with a controller using either a peer-to-peer standard (like Wi-Fi Direct) or a non-peer-to-peer standard (like a conventional Wi-Fi network). This adaptability allows the system to function in different network environments, providing flexibility for the user (’427 Patent, Abstract).
• Asserted Claims: At least Claim 1 (Compl. ¶40).
• Accused Features: The alleged capability of Roborock’s products to operate in and switch between a direct connection mode and a standard Wi-Fi network mode (Compl. ¶20, ¶40).

U.S. Patent No. 11,574,535

• Patent Identification: U.S. Patent No. 11,574,535, "Adaptable wireless power, light and automation system for household appliances," issued February 7, 2023 ('535 Patent).
• Technology Synopsis: This patent, also related to the ’313 Patent, is directed to an integrated appliance controller for household appliances. It discloses a controller with a wireless module that can operate in a first peer-to-peer mode and a second non-peer-to-peer (WLAN) mode, and can change between these modes upon receiving instructions from a personal controller, thereby adapting its communication method as needed (’535 Patent, Claim 1).
• Asserted Claims: At least Claim 1 (Compl. ¶76).
• Accused Features: The integrated control systems within Roborock's robotic vacuums and mops that allegedly feature adaptable peer-to-peer and non-peer-to-peer communication modes (Compl. ¶20, ¶76).

III. The Accused Instrumentality

Product Identification

The complaint identifies "Roborock-branded robotic vacuum cleaners and mops" as exemplary accused products, within a broader category of "WiFi-enabled devices" manufactured and sold by Defendant (Compl. ¶20).

Functionality and Market Context

The accused products are autonomous cleaning devices that incorporate Wi-Fi transceivers to connect to wireless networks. This connectivity allows users to control the devices, for example by starting, stopping, or scheduling cleaning operations, typically through an application on a smartphone or other personal controller. The complaint alleges that the methods these devices use to establish wireless communication and receive commands for operation practice the claimed inventions (Compl. ¶20, ¶28, ¶40, ¶52, ¶64, ¶76). Robotic vacuums are a significant and growing segment of the consumer smart home market. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges that Defendant’s Accused Products infringe the patents-in-suit, but the exhibits containing claim charts detailing these allegations were not attached to the publicly filed complaint (Compl. ¶38, ¶50, ¶62, ¶74, ¶86). The narrative infringement theory for each patent family can be summarized from the complaint's general allegations.

For the ’869 Patent and its parent ’377 Patent, the central theory appears to be that the Accused Products, during their initial setup or for direct control, create a direct peer-to-peer wireless link with a user's smartphone. The complaint suggests this process involves the Roborock device "simulating a network access point" to establish a connection without relying on a separate home Wi-Fi router, thereby reading on the elements of claims like Claim 1 of the ’869 Patent (Compl. ¶64; ’869 Patent, Claim 1).

For the ’313 Patent and its related patents (’427 and ’535), the infringement theory appears to focus on the adaptable nature of the Accused Products' wireless communication. The complaint alleges the products are capable of operating in a first, peer-to-peer mode (as described above) and a second, non-peer-to-peer mode where they connect to a standard Wi-Fi WLAN via a home router for routine operation and remote access. The core of this allegation is that the products are configured to "change from the first mode to the second mode upon receiving instructions from the personal controller," as required by claims like Claim 1 of the ’313 Patent (Compl. ¶52; ’313 Patent, Claim 1).

• Identified Points of Contention:
  • Technical Questions: A primary factual dispute may concern how the Accused Products' wireless functionality operates. For the ’869 Patent, the question is whether the product's initial setup mode, often called a "soft AP" mode, performs the functions of "simulating a network access point" to establish a "peer-to-peer link" as those terms are used in the patent. For the ’313 Patent, a key question is what precise event causes the device to switch from its setup mode to its normal network mode.
  • Scope Questions: The infringement analysis may turn on the scope of key claim terms. For the ’869 Patent, a question is whether "simulating a network access point" is limited to a formal implementation under the Wi-Fi Direct standard or broadly covers any ad-hoc network creation for direct device connection. For the ’313 Patent, a question is whether a user action to complete a setup process constitutes "receiving instructions...to change" communication modes, or if the claim requires a more explicit command from the user directed specifically at changing the mode of operation.

V. Key Claim Terms for Construction

• The Term: "simulating a network access point" (from ’869 Patent, Claim 1).

• Context and Importance: This term is central to the infringement allegation against the ’869 Patent. The case may depend on whether the "soft AP" or initial setup mode commonly used by IoT devices like the accused vacuums falls within the scope of this term. Practitioners may focus on this term because its construction will determine if a widespread industry practice for device provisioning reads on the patent claim.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification suggests this function is to enable communication with "legacy Wi-Fi devices" that do not support Wi-Fi Direct, indicating the term could broadly cover any function that makes the power control unit appear as a standard Wi-Fi access point to another device for the purpose of a direct connection (’869 Patent, col. 6:42-47).
  • Evidence for a Narrower Interpretation: The specification discusses this simulation in the context of the Wi-Fi Direct specification (’869 Patent, col. 6:40-42). This link could support an argument that the term is limited to the specific technical protocol for providing AP-like functionality as defined within the Wi-Fi Direct standard, not just any temporary ad-hoc network.

• The Term: "change from the first mode to the second mode upon receiving instructions from the personal controller" (from ’313 Patent, Claim 1).

• Context and Importance: This phrase defines the trigger for the claimed adaptability. Infringement of the ’313 Patent hinges on whether the accused products switch from a peer-to-peer mode to a WLAN mode specifically in response to a user command to do so.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent’s summary highlights the general goal of providing two modes of communication, one peer-to-peer and one non-peer-to-peer, which could suggest the term should be read broadly to cover any user-initiated process that results in a mode change (’313 Patent, col. 3:52-64).
  • Evidence for a Narrower Interpretation: The plain language "upon receiving instructions" suggests a direct causal link. An argument could be made that this requires a specific command to "change mode," as opposed to a command to "complete setup," where the mode change is an automatic, consequential result of completing the setup process rather than the direct object of the user's instruction.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is alleged based on Defendant providing materials such as "product manuals, brochures, videos, demonstrations, and website materials" that allegedly encourage and instruct customers to use the Accused Products in an infringing manner (e.g., Compl. ¶29, ¶41, ¶53).
• Willful Infringement: The complaint alleges willfulness based on Defendant's knowledge of the patents "since at least the date of this Complaint" (Compl. ¶29, ¶32). This allegation is based on post-suit knowledge derived from the filing and service of the complaint itself, rather than any alleged pre-suit knowledge.

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

• A core issue will be one of technical equivalence: Does the "soft AP" mode used in the accused robotic vacuums for initial network configuration operate in a manner that is technically and legally equivalent to the claimed method of "simulating a network access point" to establish a "peer-to-peer link"? The outcome may depend on detailed evidence regarding the specific wireless protocols and software architecture of the accused devices.
• A second central question will be one of causality in operation: For the adaptability patents, does the transition of an accused device from its setup mode to its normal network mode occur "upon receiving instructions" from a user to change modes, as required by the claims, or is it an automatic result of completing a setup process, potentially placing it outside the claimed sequence of operations?
• A key question for damages and remedy will be apportionment. Assuming infringement is found, the court will need to determine the value contributed by the patented setup and communication-mode features relative to the overall value of a complex, multi-functional product like a robotic vacuum cleaner.