DCT
3:18-cv-02084
Ubiquitous Connectivity LP v. TXU Energy Retail Co LLC
I. Executive Summary and Procedural Information
- Case Name: Ubiquitous Connectivity, LP v. TXU Energy Retail Company LLC
- Parties & Counsel:
- Plaintiff: Ubiquitous Connectivity, LP (Texas)
- Defendant: TXU Energy Retail Company LLC (Texas)
- Plaintiff’s Counsel: Kastl Law, PC; Heninger Garrison Davis, LLC
- Case Identification: 3:18-cv-02084, N.D. Tex., 12/28/2018
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Texas because Defendant is a Texas corporation that resides in the district.
- Core Dispute: Plaintiff alleges that Defendant’s iThermostat smart thermostat system infringes patents related to the remote monitoring and control of environmental systems using cellular communication networks.
- Technical Context: The technology concerns systems that enable on-demand, bidirectional communication between a mobile remote-control unit (e.g., a cellular phone) and a base unit that controls environmental devices (e.g., a thermostat) in a remote structure.
- Key Procedural History: The patents-in-suit share a common specification and priority date. Subsequent to the filing of this complaint, both patents were subject to Inter Partes Review (IPR) proceedings at the U.S. Patent and Trademark Office. These proceedings resulted in the cancellation of the specific independent claims asserted in this action (Claim 19 of the ’935 Patent and Claim 1 of the ’655 Patent), which raises a threshold question about the viability of the complaint as filed.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-18 | Earliest Priority Date for Patents-in-Suit |
| 2011-11-22 | U.S. Patent No. 8,064,935 Issued |
| 2017-03-21 | U.S. Patent No. 9,602,655 Issued |
| 2018-09-11 | Original Complaint Served on Defendant |
| 2018-12-28 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,064,935 - Ubiquitous Connectivity and Control System for Remote Locations, issued November 22, 2011
The Invention Explained
- Problem Addressed: The patent’s background section describes the shortcomings of prior art remote control systems for homes and businesses, noting that telephone-based interfaces were not user-friendly and often relied on "cryptic, hard-to-understand, digitized voice prompts" or inconvenient DTMF tones (’935 Patent, col. 2:42-46). Existing technologies like power line carriers were also confined to a "very limited area" (’935 Patent, col. 2:34-36).
- The Patented Solution: The invention discloses a system to overcome these limitations by using a cellular telephone as a "master remote control unit" to communicate with a "base control unit" located in a remote structure (’935 Patent, col. 4:9-12; Fig. 1). This communication is achieved through the cellular network's Short Message Service (SMS), enabling "on-demand digital, private, and direct communications" for monitoring and controlling environmental devices like thermostats or security systems without requiring a user to dial in or navigate complex voice menus (’935 Patent, col. 3:9-14, col. 7:1-13). The architecture of the base unit is detailed in the specification, showing its various communication interfaces (’935 Patent, Fig. 4).
- Technical Importance: This approach sought to create a more seamless and user-friendly paradigm for home automation by integrating the capabilities of modern cellular networks and message-based communication, moving beyond the less convenient remote access methods of the time (Compl. ¶23-24).
Key Claims at a Glance
- The complaint asserts independent Claim 19 (’935 Patent, col. 15:9-28; Compl. ¶42).
- The essential elements of Claim 19 include:
- A base unit interfaced with an environmental device to receive its current status.
- A transmitter at the base unit to send a wireless message with the status to a remote unit.
- A receiver at the base unit to receive a wireless message with a command from the remote unit.
- A controller at the base unit to send the received command to the environmental device.
- The complaint reserves the right to assert other claims of the ’935 Patent (Compl. ¶42).
U.S. Patent No. 9,602,655 - Ubiquitous Connectivity and Control System for Remote Locations, issued March 21, 2017
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’935 Patent, the ’655 Patent addresses the same technical field. It emphasizes that in 2004, existing systems were crude, requiring users to dial in and press keypad keys to generate DTMF tones, followed by manual disconnection (’655 Patent, col. 7:5-13). The complaint asserts that then-existing "OEM" base units were unable to create these types of "session-based communications with cellular telephones" (Compl. ¶20).
- The Patented Solution: The patented solution is a system comprising a base unit and a cellular remote unit. The base unit features a microcontroller and a wireless communication interface for sending and receiving digital messages (e.g., status and commands) via a cellular network (’655 Patent, Claim 1). The patent also explicitly describes a geo-fencing capability, where the base unit can change its operational characteristics based on the geographical location of the remote unit, such as when a user travels beyond a set distance from the home (’655 Patent, col. 8:29-41, col. 9:55-63).
- Technical Importance: The invention provided a specific architecture for a base unit to enable advanced, automated control functions, such as location-based adjustments to environmental settings, by leveraging bidirectional digital messaging with a cellular device (Compl. ¶26, ¶28).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (’655 Patent, col. 13:54-col. 14:27; Compl. ¶57).
- The essential elements of Claim 1 include:
- A base unit with interfaces to an environmental device and a cellular communications network.
- The base unit sends a first digital message (with environmental information) to a cellular remote unit and receives a second digital message (with a command) from it.
- A microcontroller processes the command to generate a control instruction for the environmental device.
- The command is initiated by a user from the cellular remote unit.
- The cellular remote unit is configured to determine its position data, determine when it is outside a geo-fence, and transmit a notification in response.
- The complaint reserves the right to assert other claims of the ’655 Patent (Compl. ¶57).
III. The Accused Instrumentality
Product Identification
The "TXU iThermostat branded system," which includes the "Brighten® iThermostat" device and the associated "TXU iThermostat app" for mobile devices (Compl. ¶30, ¶31, ¶37).
Functionality and Market Context
- The accused system allows users to remotely control their thermostat from a mobile app on devices such as an iPhone or Android phone (Compl. ¶31). Promotional materials in the complaint describe this as the ability to "Access anytime, anywhere" (Compl. p. 11, Fig. 1).
- Core functionalities include adjusting temperature, setting heating and cooling schedules, and viewing energy usage data from the mobile device (Compl. ¶35).
- The system is alleged to include a "Radius™" feature that uses the GPS location of a user's mobile device "to determine when you've left your location and turns on Away for your thermostat(s)" (Compl. ¶36).
- The complaint alleges that the provision of the iThermostat system is a "business focus of Defendant" (Compl. ¶44).
IV. Analysis of Infringement Allegations
8,064,935 Infringement Allegations
| Claim Element (from Independent Claim 19) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base unit operatively interfaced with an environmental device, and configured to receive a current status of an environmental device; | The Brighten® iThermostat device is a base unit interfaced with an environmental device (thermostat/HVAC) and receives current room temperature readings (Compl. ¶37, ¶42). | ¶37, ¶42 | col. 4:56-62 |
| a transmitter associated with said base unit, and configured to send a first message to a remote unit...including the current status... | The iThermostat system sends information, such as usage data and status, to the user's mobile device app (the remote unit) (Compl. ¶35). | ¶35 | col. 4:56-59 |
| a receiver associated with said base unit, and configured to receive a second message from the remote unit...including a command... | The iThermostat system receives commands, such as temperature change settings, from the user's mobile app (Compl. ¶31, ¶35). | ¶31, ¶35 | col. 4:56-59 |
| a controller operatively associated with the base unit...and configured to send the command to the environmental device. | The Brighten® iThermostat device acts as the controller, processing commands from the app and sending instructions to the user's HVAC system to change the temperature (Compl. ¶37, ¶42). | ¶37, ¶42 | col. 4:56-62 |
9,602,655 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...a cellular remote unit...comprising: a first communication interface configured to receive environmental information from the...device | The Brighten® iThermostat (base unit) is interfaced with the environmental device (HVAC system) to receive temperature information and send control instructions (Compl. ¶37). | ¶37 | col. 5:6-10 |
| 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 iThermostat system communicates with the iThermostat mobile app (cellular remote unit) over a wireless network to send status information and receive user commands (Compl. ¶31-32). | ¶31-32 | col. 5:11-15 |
| wherein the first message is a first digital communications message...and wherein the second message is a second digital communications message including a command... | The complaint alleges communication occurs via a mobile app, which implies the use of digital messages for sending status information and receiving commands for temperature adjustments (Compl. ¶31, ¶35). | ¶31, ¶35 | col. 3:9-12 |
| a microcontroller configured to process the second message, to provide the control instruction based on the command, and to send the control instruction to the environmental device... | The iThermostat device processes the commands sent from the mobile app and controls the user's HVAC system accordingly (Compl. ¶37). | ¶37 | col. 4:56-62 |
| wherein the command is for the base unit initiated by a user from the cellular remote unit... | Users initiate commands, such as adjusting temperature, by interacting with the iThermostat app on their mobile device (Compl. ¶31, ¶35). | ¶31, ¶35 | col. 6:55-59 |
| 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... | The system's "Radius™" feature "uses GPS location serves on a user's mobile device to determine when you've left your location and turns on Away for your thermostat(s)." A screenshot shows a "Radius Setup" screen for setting this distance (Compl. p. 12, Fig. 2). | ¶36 | col. 8:65-9:2 |
Identified Points of Contention
- Validity: The primary issue for both asserted claims is their viability, as both Claim 19 of the ’935 Patent and Claim 1 of the ’655 Patent were cancelled in IPR proceedings after the complaint was filed.
- Technical Questions (’655 Patent): Assuming a valid claim with a geo-fencing limitation were asserted, a key question would be whether the accused "Radius™" feature meets the claim requirements. The complaint alleges the feature uses GPS to "determine when you've left" and "turns on Away mode" (Compl. ¶36). The complaint does not, however, explicitly allege that this feature "transmit[s] a notification" as required by cancelled Claim 1, raising a question about whether that specific claimed step is performed.
V. Key Claim Terms for Construction
- The Term: "base unit" (from ’935 Patent, Claim 19 and ’655 Patent, Claim 1)
- Context and Importance: The infringement theory depends on mapping the accused product architecture to the claimed "base unit." The complaint identifies the physical "Brighten® iThermostat" device as the base unit (Compl. ¶42). A dispute may arise over whether this term is limited to a single physical device within the home or could also encompass distributed components, such as backend servers operated by the Defendant, which may be necessary for the system's operation.
- Intrinsic Evidence for a Broader Interpretation: The specification suggests the base unit can be a complex hub, describing it as "TCP/IP enabled" and having interfaces for Ethernet, which could support a construction that includes network-connected components beyond a single physical box (’935 Patent, col. 5:40-45).
- Intrinsic Evidence for a Narrower Interpretation: The patent figures and primary embodiments depict the "base control unit (16)" as a discrete piece of hardware located within a "structure (18)," physically separate from the "remote location (14)" of the user, which may support a narrower construction limited to the device in the user's home (’935 Patent, Fig. 1).
- The Term: "determine when the cellular remote unit is outside a geo-fence" (from ’655 Patent, Claim 1)
- Context and Importance: This term is central to the geo-fencing allegation. The complaint's evidence is the "Radius Setup" screen, which shows a circular zone around a location (Compl. p. 12, Fig. 2). The construction of "geo-fence" will determine if this circular "Radius" functionality meets the claim limitation.
- Intrinsic Evidence for a Broader Interpretation: The patent provides an example of geo-fencing where "the remote control unit travels a distance that exceeds the programmed distance from the base control unit," which supports a simple, radius-based definition (’655 Patent, col. 9:59-61).
- Intrinsic Evidence for a Narrower Interpretation: Practitioners may focus on this term because the plain meaning of "fence" could imply a more complex perimeter than a simple circle. A party could argue the term requires the ability to define non-circular or multi-point boundaries, a capability not explicitly shown in the complaint's evidence.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant encourages and instructs customers to use the accused iThermostat system in an infringing manner through "guidance," "information brochures, promotional material, and contact information" (Compl. ¶45, ¶60).
- Willful Infringement: Willfulness is alleged based on Defendant's knowledge of the patents-in-suit as of the date the original complaint was served, September 11, 2018 (Compl. ¶44, ¶59). The allegations are therefore based on post-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- Viability of Asserted Claims: The central and dispositive issue is that the specific independent claims asserted in the complaint (Claim 19 of the ’935 patent and Claim 1 of the ’655 patent) were cancelled in post-filing IPR proceedings. A threshold question for the court will be whether the plaintiff can amend its complaint to proceed on any of the surviving claims from the patents-in-suit and, if so, whether the infringement allegations can be sustained against those different claims.
- Geo-Fence Functionality: Should the case proceed on a surviving claim that includes a geo-fencing element, a key evidentiary question will be one of functional mapping: does the accused "Radius™" feature, which activates an "Away mode," perform all steps required by such a claim? Specifically, the court would need to determine if the feature performs functions, such as transmitting a specific type of "notification," that may be required by the claim language.
- Definitional Scope: A core claim construction issue will be the scope of the term "base unit." The case may turn on whether this term is construed narrowly to mean only the physical thermostat device within a customer's home, or more broadly to encompass the distributed system architecture, including the defendant’s remote servers, that enables the accused functionality.