4:17-cv-03283
Kilbourne v. Apple
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mark W. Kilbourne (Texas)
- Defendant: Apple, Inc. (California)
- Plaintiff’s Counsel: Yetter Coleman LLP
- Case Identification: 4:17-cv-03283, S.D. Tex., 03/05/2018
- Venue Allegations: Venue is based on Defendant Apple, Inc. having multiple "regular and established physical places of business" (retail stores) within the Southern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s August Smart Lock, when used with its HomeKit framework, infringes a patent related to a universal, retrofit adapter for remotely operating existing deadbolt locks.
- Technical Context: Smart locks designed to retrofit existing deadbolts represent a significant segment of the consumer home automation market, offering users keyless entry and remote access without requiring the complete replacement of their door's lock and key hardware.
- Key Procedural History: The complaint alleges that Plaintiff disclosed his patented technology to Apple in 2014, including shipping a physical product marked with the patent number, as part of an unsuccessful effort to have a companion app listed on the Apple App Store. Subsequent to the filing of this complaint, the patent-in-suit was the subject of an Inter Partes Review (IPR2019-00233) at the U.S. Patent and Trademark Office. The IPR concluded with the cancellation of method claims 11-17, while apparatus claims, including independent claim 1, survived the validity challenge.
Case Timeline
| Date | Event |
|---|---|
| 2004-12-07 | ’795 Patent Priority Date (Filing Date) |
| 2008-05-20 | ’795 Patent Issue Date |
| 2014-09-24 | Apple allegedly emails Plaintiff requesting hardware for app review |
| 2014-10-03 | Plaintiff's patent-marked hardware allegedly delivered to Apple |
| 2018-03-05 | Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,373,795 - "Universal Remote Deadbolt Adapter," issued May 20, 2008
The Invention Explained
- Problem Addressed: The patent identifies a need for a remote-entry system that can be easily installed and removed without permanently altering or replacing an existing deadbolt lock (Compl. ¶¶ 8-9). This is described as particularly relevant for renters or others in situations where replacing a lock is "inconvenient, costly and/or not feasible" (’795 Patent, col. 1:26-34; Compl. ¶ 8).
- The Patented Solution: The invention is a self-contained, battery-powered adapter unit that mounts onto the interior side of a door, directly over the existing deadbolt hardware (’795 Patent, col. 2:7-15). It uses the deadbolt’s original mounting screws for installation, connecting to the lock's internal tailpiece to mechanically turn it via a motor that is activated by a remote transmitter (’795 Patent, col. 11:37-39, col. 12:9-14). A key feature is a "reversible" member designed to engage with the differently shaped tailpieces used by various lock manufacturers, making the adapter "universal" (’795 Patent, col. 7:31-40).
- Technical Importance: The technology provides a non-destructive method for adding remote and keyless functionality to a wide variety of common residential deadbolts, preserving the use of the original physical keys (’795 Patent, Abstract).
Key Claims at a Glance
- The complaint asserts "one or more claims" of the ’795 patent, with independent claim 1 appearing central to the allegations (Compl. ¶ 26).
- The essential elements of independent claim 1 include:
- A system comprising a signal transmitter and a housing containing a motor and signal receiver.
- The housing is "configured to be mounted utilizing only the existing mounting screws of said pre-existing deadbolt lock."
- A "reversible elongated member" that connects the motor's output shaft to the "tailpiece member of said pre-existing deadbolt lock."
- This reversible member is "adaptable to substantially all tailpiece members of pre-existing deadbolt locks regardless of manufacturer configurations."
- The complaint reserves the right to assert additional claims, which may include dependent claims (Compl. ¶ 26).
III. The Accused Instrumentality
Product Identification
The "August Smart Lock" (the "Accused Product"), which is offered for sale by Apple and promoted for use with Apple's HomeKit software framework and the August Home app (Compl. ¶¶ 22-24).
Functionality and Market Context
The complaint alleges the August Smart Lock is a "system for remotely opening and closing a pre-existing deadbolt lock" (Compl. ¶ 23). It is sold through Apple's online and retail stores and integrates with Apple devices and the Apple App Store, which provides the software for users to interact with the lock (Compl. ¶¶ 23-25). The complaint does not provide specific technical details on the installation or internal mechanics of the August Smart Lock, focusing instead on its function as a remote operator for existing deadbolts.
IV. Analysis of Infringement Allegations
The complaint references claim charts in an "Exhibit B" that was not provided with the amended complaint document (Compl. ¶ 26, 39). The infringement theory is summarized below based on the complaint's narrative allegations and an analysis of independent claim 1.
’795 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system for remotely opening and closing a pre-existing deadbolt lock comprising: a pre-existing deadbolt lock; a signal transmitter; a housing remote from the transmitter... | The Accused Product is alleged to be a system for remotely opening and closing a pre-existing deadbolt lock, used in conjunction with a transmitter (e.g., an Apple iPhone running the August Home app). | ¶¶23-24 | col. 11:25-36 |
| said housing configured to be mounted utilizing only the existing mounting screws of said pre-existing deadbolt lock; | The complaint alleges that the operation of the August Smart Lock practices this claim, implying that its housing is mounted using only the existing screws of the deadbolt it is attached to. | ¶26 | col. 11:37-39 |
| a reversible elongated member having a first end and a second end... said inner surface of said first end or said second end of said reversible elongated member being in direct contact with a tailpiece member of said pre-existing deadbolt lock with a deadbolt... | The complaint’s allegations suggest the August Smart Lock contains an internal component that directly engages and rotates the tailpiece of the pre-existing deadbolt to actuate the lock. | ¶26 | col. 11:46-12:4 |
| wherein said reversible elongated member is configured such that the combination of the configurations of said inner surface of said first end and said second end are adaptable to substantially all tailpiece members of pre-existing deadbolt locks regardless of manufacturer configurations... | The general allegation of infringement implies the August Smart Lock possesses a "universal" feature allowing it to connect to tailpieces from various lock manufacturers. | ¶26 | col. 12:5-8 |
Identified Points of Contention
- Scope Questions: A central question will be whether the August Smart Lock's installation hardware meets the "utilizing only the existing mounting screws" limitation. If the accused product requires any adhesive, its own proprietary brackets that do not use the screw holes, or additional fasteners that are not part of the original deadbolt, its non-infringement argument may be strengthened.
- Technical Questions: The complaint does not specify how the August Smart Lock adapts to different deadbolts. A key technical question for the court will be whether the accused product contains a "reversible elongated member" or a structurally equivalent component that is "adaptable to substantially all tailpiece members" as claimed in the patent.
V. Key Claim Terms for Construction
The Term: "utilizing only the existing mounting screws of said pre-existing deadbolt lock"
Context and Importance
This term appears to be a critical limitation defining how the patented device achieves its non-destructive, easily reversible installation. Practitioners may focus on this term because if the August Smart Lock's mounting system deviates from using "only" the pre-existing screws, it may fall outside the claim's scope.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: A party could argue the term’s purpose is to capture any mounting method that avoids permanent modification to the door (e.g., drilling new holes), and should not be read so literally as to exclude, for example, the use of included adapter plates that still use the original screw locations.
- Evidence for a Narrower Interpretation: The plain meaning of "only" suggests exclusivity. The specification reinforces a narrow reading, stating the design is "to utilized the bolts 25 that are part of the deadbolt it remotizes" (’795 Patent, col. 6:49-51).
The Term: "reversible elongated member"
Context and Importance
This term is central to the patent's claim of universality. The infringement analysis will depend on whether the August Smart Lock's mechanism for engaging the deadbolt tailpiece has the features of being both "reversible" and "elongated."
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: A party might argue "reversible" does not require a part that is physically flipped over, but could encompass any component with multiple engagement surfaces or configurations that can be selected to fit different tailpieces.
- Evidence for a Narrower Interpretation: The specification explicitly describes and illustrates a splined stem with two different faces, one with a "standard slot formation" and another with a "half oval face" or "cross-slot formation," which the user can rotate to match the lock (’795 Patent, Fig. 6C; col. 7:31-40). This embodiment could be used to argue that "reversible" implies a dual-faced physical object.
VI. Other Allegations
Indirect Infringement
The complaint alleges Apple induces infringement by providing HomeKit functionality and offering the August Home app on its App Store, thereby "actively encouraging customers" to use the Accused Products in an infringing manner (Compl. ¶ 37). It further alleges contributory infringement on the basis that the August Smart Lock is intended for this infringing use and has "no substantial non-infringing uses" (Compl. ¶¶ 38, 41).
Willful Infringement
Willfulness is alleged based on pre-suit knowledge of the ’795 Patent (Compl. ¶¶ 31, 42). The complaint alleges that in October 2014, Plaintiff shipped its own Remotizer® hardware to Apple at Apple's request for an app review (Compl. ¶¶ 19-20). The complaint includes a visual depicting the product packaging, allegedly from that shipment, which is clearly marked "Pat. No.: 7373795B2" (Compl. p. 5). This event is presented as establishing Apple’s knowledge of the patent years before the lawsuit was filed.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural and functional correspondence: Does the evidence show that the August Smart Lock is installed "utilizing only the existing mounting screws" of a pre-existing deadbolt, and does it contain a "reversible elongated member" adaptable to different lock types, or a mechanism that is legally equivalent to what is claimed in the ’795 patent? The complaint’s lack of technical detail on the accused product makes this a central evidentiary hurdle.
- A second key issue, pivotal for willfulness and potential enhanced damages, will be one of causal nexus and knowledge: Can Plaintiff demonstrate that Apple's receipt and review of the patent-marked "Remotizer" hardware in 2014 for an App Store submission put the company on notice of the ’795 patent for the purposes of its development or sale of the later, accused August Smart Lock?