DCT

2:25-cv-01061

Kortek Industries Pty Ltd v. Shenzhen Sonoff Tech Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:25-cv-01061, E.D. Tex., 10/23/2025
  • Venue Allegations: Venue is alleged to be proper because the Defendant is a foreign corporation, and has allegedly committed or induced acts of patent infringement in the Eastern District of Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s WiFi-enabled smart home devices infringe six U.S. patents related to wireless power, lighting, and automation control.
  • Technical Context: The technology resides in the Internet of Things (IoT) and smart home sector, focusing on systems and methods for wirelessly controlling mains-powered electrical devices without relying on a central network access point.
  • Key Procedural History: The complaint states that Plaintiff Kortek was established in 2013 to commercialize intellectual property developed by Xitel Pty Ltd. since 1976. The complaint does not mention 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, ’427, and ’869 Patents
2011-11-07 Earliest Priority Date for ’313, ’376, and ’881 Patents
2016-10-11 U.S. Patent No. 9,465,377 Issues
2017-03-07 U.S. Patent No. 9,590,427 Issues
2018-03-20 U.S. Patent No. 9,923,376 Issues
2019-10-01 U.S. Patent No. 10,429,869 Issues
2020-12-08 U.S. Patent No. 10,862,313 Issues
2024-02-06 U.S. Patent No. 11,893,881 Issues
2025-10-23 Complaint Filed

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

U.S. Patent No. 9,465,377 - "Wireless power, light and automation control"

The Invention Explained

  • Problem Addressed: The patent’s background describes conventional Wi-Fi-based home automation systems as reliant on a central wireless Access Point (AP), which creates a single point of failure and can suffer from data latency, inhibiting system functionality ( ’377 Patent, col. 1:33-52).
  • The Patented Solution: The invention provides for a power control unit that communicates directly with a controller, such as a smartphone, using a peer-to-peer wireless link, thereby avoiding the need for a central AP (’377 Patent, Abstract). The power control unit is configured to establish this link by either “simulating a Wi-Fi access point” to connect with legacy Wi-Fi devices or by “negotiating with the controller as to which... will assume a group owner role” if the controller supports Wi-Fi Direct technology (’377 Patent, col. 3:18-24).
  • Technical Importance: This approach enables decentralized, direct wireless control over electrical appliances, which can increase system reliability and simplify network setup compared to traditional hub-based smart home architectures.

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶29).
  • Claim 1 of the ’377 Patent recites:
    • A power control device for controlling an electrical apparatus via a peer-to-peer link with a controller.
    • The device comprises a microprocessor, a power control circuit, and a wireless communications transceiver.
    • The microprocessor is configured to open the peer-to-peer link by one of two alternative methods: (1) "simulating a Wi-Fi access point" for a legacy Wi-Fi controller, or (2) "negotiating with the controller as to which... will assume a group owner role" if the controller is a Wi-Fi Direct device.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 9,590,427 - "Adaptable wireless power, light and automation system"

The Invention Explained

  • Problem Addressed: The patent addresses the same limitations of AP-dependent home automation systems as the ’377 patent, while also recognizing the need for devices to operate flexibly in different network environments (’427 Patent, col. 1:33-52).
  • The Patented Solution: The invention is a controller that can operate in two distinct modes: a first peer-to-peer mode for direct communication with a personal controller, and a second non-peer-to-peer mode for communicating through a network access point in a standard WLAN (’427 Patent, col. 35:4-15). The controller is configured to "change from the first mode to the second mode upon receiving instructions from the personal controller," giving it adaptability to different use cases and network topologies (’427 Patent, col. 35:12-15).
  • Technical Importance: This dual-mode capability provides architectural flexibility, allowing a single device to function either independently for localized control or as part of a broader, internet-connected home network.

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶41).
  • Claim 1 of the ’427 Patent recites:
    • A controller for controlling a light via a wireless link.
    • It includes a wireless control module with a microcontroller configured to operate in a first (peer-to-peer) mode and a second (non-peer-to-peer) mode.
    • The microcontroller is configured to "change from the first mode to the second mode upon receiving instructions from the personal controller."
    • It includes a power control circuit that varies the electricity supply based on received instructions.
  • The complaint does not explicitly reserve the right to assert dependent claims.

Multi-Patent Capsules

  • U.S. Patent No. 10,862,313 - "Adaptable Wireless Power, Light and Automation System"

    • Technology Synopsis: This patent describes an adaptable power control unit capable of operating in either a peer-to-peer communications mode (e.g., Wi-Fi Direct) or a non-peer-to-peer mode as a client on a standard Wi-Fi WLAN (’313 Patent, Abstract). The invention allows a single device to function flexibly within different network architectures.
    • Asserted Claims: At least independent claim 1 is asserted (Compl. ¶53).
    • Accused Features: The complaint alleges that Defendant's general class of WiFi-enabled products infringes this patent (Compl. ¶53).

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

    • Technology Synopsis: This patent covers a power control device that establishes a direct, peer-to-peer wireless link with a controller like a smartphone, bypassing the need for a central network router or access point (’869 Patent, Abstract). The device is configured to initiate this connection by sending a discovery message and can operate by "simulating a network access point" to establish the link (’869 Patent, col. 32:57-65).
    • Asserted Claims: At least independent claim 1 is asserted (Compl. ¶65).
    • Accused Features: The complaint alleges that Defendant's general class of WiFi-enabled products infringes this patent (Compl. ¶65).

  • U.S. Patent No. 11,893,881 - "Adaptable Wireless Power to a Security System"

    • Technology Synopsis: This patent describes a power control unit for a security system that can adapt its communication method, operating in either a peer-to-peer mode for direct communication or a non-peer-to-peer mode through a central network access point (’881 Patent, Abstract). This provides flexibility in how a security device connects and communicates.
    • Asserted Claims: At least independent claim 1 is asserted (Compl. ¶77).
    • Accused Features: The complaint alleges that Defendant's general class of WiFi-enabled products infringes this patent (Compl. ¶77).

  • U.S. Patent No. 9,923,376 - "Adaptable Wireless Power, Light and Automation System"

    • Technology Synopsis: This patent describes a system for controlling an electrical apparatus that includes a power control unit with an internal power control circuit and a communications link to an external power control circuit (’376 Patent, Abstract). The system's microcontroller can operate both circuits and is configured to communicate with a personal controller in either a peer-to-peer or non-peer-to-peer mode.
    • Asserted Claims: At least independent claim 12 is asserted (Compl. ¶99).
    • Accused Features: The complaint alleges that Defendant's general class of WiFi-enabled products infringes this patent (Compl. ¶89).

III. The Accused Instrumentality

Product Identification

The Accused Instrumentalities are Sonoff's WiFi-enabled devices, including the Sonoff CAM series, Sonoff Smart Switches, Sonoff Mini, WiFi Smart Plugs, Lite Smart Plug, Slampher R2, and ZB Bridge products (Compl. ¶21).

Functionality and Market Context

The complaint describes these products as WiFi-enabled devices for the smart home or Internet of Things (IoT) market (Compl. ¶¶20-21). Based on their product categories, they function to allow users to remotely monitor and control power to appliances, lighting, and other electrical devices using a wireless network. The complaint alleges these products are marketed and sold in the United States through online channels such as Amazon and Defendant's own website (Compl. ¶20).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

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

  • The complaint references an infringement claim chart in Exhibit G, which was not provided (Compl. ¶39). Therefore, a detailed claim chart summary cannot be constructed from the complaint. The core allegation is that the Accused Products directly and indirectly infringe at least claim 1 (Compl. ¶¶29-30).

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

  • The complaint references an infringement claim chart in Exhibit H, which was not provided (Compl. ¶51). Therefore, a detailed claim chart summary cannot be constructed from the complaint. The core allegation is that the Accused Products directly and indirectly infringe at least claim 1 (Compl. ¶¶41-42).

Identified Points of Contention

  • Technical Questions: A primary technical question for the ’377 patent will be whether the accused Sonoff products, when establishing a direct wireless connection, actually perform one of the two specific methods required by claim 1: either "simulating a Wi-Fi access point" for legacy devices or "negotiating...a group owner role" for Wi-Fi Direct devices. The infringement analysis may depend on evidence detailing the specific protocols used by the accused products during their pairing and direct-connection modes.
  • Scope Questions: For the ’427 patent, a key question of scope arises from the limitation requiring the device to "change from the first mode to the second mode upon receiving instructions from the personal controller." The dispute may center on whether the one-time initial setup process, where a user's app configures a device to join a home Wi-Fi network, meets this claim limitation, or if the claim requires an ability to dynamically switch between operational modes after initial setup.

V. Key Claim Terms for Construction

  • Term: "simulating a Wi-Fi access point" (from claim 1 of the ’377 Patent)

    • Context and Importance: This term defines one of the two alternative functionalities for establishing the claimed peer-to-peer link. The viability of the infringement case for legacy device interactions may hinge on its construction. Practitioners may focus on this term because its definition will determine whether any direct-connect or ad-hoc mode in the accused products falls within the claim, or if a more specific technical implementation that fully mimics a formal IEEE 802.11 AP is required.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification suggests the function is to "appear to legacy Wi-Fi devices, such as smartphones, as a Wi-Fi Access Point," which could support an interpretation based on functional appearance rather than strict technical adherence (’377 Patent, col. 6:40-44).
      • Evidence for a Narrower Interpretation: The same section of the specification immediately references the "Wi-Fi Direct specification" and its capability "to form peer-to-peer links with legacy Wi-Fi devices," which may suggest that "simulating" is a term of art defined by the protocols within that specific industry standard (’377 Patent, col. 6:40-48).

  • Term: "change from the first mode to the second mode upon receiving instructions from the personal controller" (from claim 1 of the ’427 Patent)

    • Context and Importance: This term is critical because it links the device's operational mode switch to a specific action from the user's controller. The dispute may turn on whether a one-time provisioning process constitutes a "change" between modes as claimed.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent describes a user using a smartphone app to set operational parameters for either a WLAN or Wi-Fi Direct connection, after which the device is commanded to "restart" in the chosen configuration, which could support construing the initial setup as the claimed "change" (’313 Patent, col. 11:4-13).
      • Evidence for a Narrower Interpretation: The claim language "change from the first mode to the second mode" suggests a transition between two existing, operational states. A party could argue this requires the device to be fully functional in the peer-to-peer "first mode" before receiving instructions to switch, potentially excluding an initial, out-of-the-box setup procedure where the first mode was never fully operative.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement across all asserted patents, stating that Defendant provides "product manuals, brochures, videos, demonstrations, and website materials" that allegedly instruct and encourage customers to use the Accused Products in an infringing manner (Compl. ¶¶31, 43, 55, 67, 79, 91).
  • Willful Infringement: Willfulness is alleged for all asserted patents based on Defendant’s alleged knowledge of its infringement "since at least the date of this Complaint" (Compl. ¶¶33, 45, 57, 69, 81, 93). This primarily establishes a basis for post-suit willful infringement.

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

  • A central issue will be one of technical implementation: what evidence will be presented to demonstrate that the accused Sonoff products establish wireless connections using the specific, alternative methods recited in the asserted claims (e.g., "simulating a Wi-Fi access point" or dynamically "changing" modes upon instruction), as opposed to using other standard or proprietary Wi-Fi setup and connection protocols?
  • A key legal question will be one of claim construction: can terms like "simulating a Wi-Fi access point" and "change from the first mode" be construed broadly enough to cover the initial, app-guided setup and provisioning processes common to many IoT devices, or will they be limited to more specific, dynamic functionalities during post-setup operation?
  • An initial procedural question may concern the sufficiency of the pleadings. Given that the complaint's infringement allegations rely entirely on references to unattached claim chart exhibits, it raises the possibility of a dispute over whether the complaint provides sufficient factual detail to state a plausible claim for relief under the Twombly/Iqbal standard.