DCT
1:18-cv-00670
Karamelion LLC v. Protect America Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Karamelion LLC (Texas)
- Defendant: Protect America, Inc. (Texas)
- Plaintiff’s Counsel: Direction IP Law
- Case Identification: 1:18-cv-00670, W.D. Tex., 08/09/2018
- Venue Allegations: Venue is alleged to be proper as Defendant is a Texas corporation with a place of business within the Western District of Texas where a portion of the alleged infringement occurred.
- Core Dispute: Plaintiff alleges that Defendant’s Z-Wave based home automation and security products infringe patents related to wireless remote appliance control systems that use low-power relay units to form a mesh network.
- Technical Context: The technology concerns the field of smart home or building automation, where distributed devices like sensors, locks, and thermostats communicate wirelessly with each other and a central controller.
- Key Procedural History: U.S. Patent 6,873,245 is a continuation-in-part of the application that led to U.S. Patent 6,275,166. The complaint asserts that during prosecution of the parent application, the inventors distinguished the prior art by noting it did not teach a relay unit that was also an appliance controller communicating with a headend computer via at least two other relay units. Subsequent to the filing of this complaint, U.S. Patent 6,275,166 underwent an ex parte re-examination where all claims (1-17) were cancelled, with the certificate issued on December 28, 2021.
Case Timeline
| Date | Event |
|---|---|
| 1999-01-19 | Priority Date for ’166 Patent |
| 1999-01-19 | Priority Date for ’245 Patent |
| 2001-08-14 | ’166 Patent Issued |
| 2001-08-14 | Application Filed for ’245 Patent |
| 2005-03-29 | ’245 Patent Issued |
| 2018-08-09 | Complaint Filed |
| 2021-12-28 | Ex Parte Re-examination Certificate Issued for '166 Patent (All Claims Cancelled) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,275,166 - “RF Remote Appliance Control/Monitoring System,” issued August 14, 2001
The Invention Explained
- Problem Addressed: The patent identifies the high cost and complexity of installing and modifying wired connections for building control systems (e.g., HVAC, lighting, security) as a major difficulty of prior art systems. (Compl. ¶11; ’166 Patent, col. 1:14-18). It further notes that existing wireless solutions were often either prohibitively expensive due to licensing requirements for long-range systems or suffered from limited range and potential interference. (Compl. ¶12; ’166 Patent, col. 1:28-37).
- The Patented Solution: The invention proposes a wireless control system architecture that uses a "distributed array of low power (short range) wireless controllers that are also functional as relay units." (Compl. ¶13; ’166 Patent, col. 1:42-44). These units form a multi-hop network, relaying messages for one another to communicate over long distances with a central "headend control computer," thereby avoiding the need for either extensive wiring or high-power, single-point transmitters. (’166 Patent, col. 4:62-col. 5:1).
- Technical Importance: This mesh-like networking approach was intended to create a more scalable, robust, and cost-effective solution for building automation than previously available methods. (Compl. ¶17; ’166 Patent, col. 1:38-46).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1. (Compl. ¶18).
- Essential elements of Claim 1 include:
- An appliance controller for a distributed system comprising a "headend computer", appliances, and a plurality of "relay units".
- A low power satellite radio transceiver.
- An appliance interface for communicating with a local appliance.
- A microcomputer with first program instructions for communicating with the "headend computer" and second program instructions for relaying communications between the "headend computer" and other relay units.
- A final limitation requires that "at least some of the relay units communicate with the headend computer by relay communications using at least two others of the relay units."
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 6,873,245 - “RF Remote Appliance Control/Monitoring Network,” issued March 29, 2005
The Invention Explained
- Problem Addressed: As a continuation-in-part, the ’245 Patent addresses the same problems as the ’166 Patent, namely the expense, unreliability, and difficulty of use associated with prior art building control systems. (Compl. ¶28; ’245 Patent, col. 1:44-57).
- The Patented Solution: The solution is structurally similar to that of the parent ’166 Patent, involving a network of low-power wireless controllers that also function as relays. (’245 Patent, col. 1:58-62). A distinction in the claims of the ’245 Patent is the focus on communications originating from "another of the relay units" rather than from a "headend computer," framing the system with a greater emphasis on its peer-to-peer relay capabilities. (’245 Patent, col. 2:6-14).
- Technical Importance: The invention provides a framework for a decentralized, self-extending wireless network for device control and monitoring. (Compl. ¶28; ’245 Patent, col. 1:58-62).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1. (Compl. ¶29).
- Essential elements of Claim 1 include:
- An appliance controller for a distributed system with appliances and a plurality of "relay units".
- A low power satellite radio transceiver.
- An appliance interface for communicating with a local appliance.
- A microcomputer with first program instructions for communicating with "another of the relay units" and second program instructions for relaying communications between "another of the relay units and a different relay unit".
- A final limitation requires that "at least some of the relay units communicate with others of the relay units by relay communications using at least two others of the relay units."
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The "Accused Instrumentality" includes the Protect America Appliance Control, Smart Thermostat, Garage Door Controller, Smart Lock, and Wall Outlet. (Compl. ¶¶ 18, 29). The complaint shows images of several of these products. (Compl. p. 14).
Functionality and Market Context
- The complaint alleges these products operate on the Z-Wave protocol, which it describes as a wireless mesh network for home automation. (Compl. ¶¶ 19-20). In this system, a central controller, identified as the "Protect America Touchscreen Control panel," communicates with various Z-Wave devices. (Compl. ¶19). The complaint alleges that devices in the network can "pass signals to one another through an intermediary device, allowing one to send a wireless message to another that would otherwise be out of range." (Compl. ¶20). The complaint includes a marketing image of the "Simon XTi" touchscreen panel, described as a "self-contained home security system." (Compl. p. 12).
IV. Analysis of Infringement Allegations
The complaint alleges that all claims became unenforceable for the '166 patent due to a re-examination that occurred after the complaint was filed. Therefore, the infringement analysis is moot for that patent.
’245 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An appliance controller for a distributed appliance system having a multiplicity of appliances, and a plurality of relay units, one of the relay units being the appliance controller... | The Accused Instrumentalities (e.g., Smart Thermostat, Smart Lock) are appliance controllers within a Z-Wave network of multiple appliances and relay units (repeaters), with each controller also being a relay unit (Z-Wave node). | ¶30 | col. 2:1-4 |
| (a) a low power satellite radio transceiver having a range being less than a distance to at least some of the appliances; | Each accused Z-Wave device contains a low-power radio frequency transceiver with a limited range (e.g., 300 feet), which is less than the potential size of the overall network. | ¶31 | col. 2:5-7 |
| (b) an appliance interface for communicating with the at least one local appliance; | Each Accused Instrumentality has an interface to communicate with and control a local appliance, such as a plug-in appliance, HVAC unit, or door lock mechanism. | ¶32 | col. 2:8-9 |
| (c) a microcomputer connected between the satellite radio transceiver and the appliance interface and having first program instructions for controlling the satellite transceiver and second program instructions for directing communication between the...interface; | Each device has a microcontroller connected to its Z-Wave transceiver and appliance interface, with program instructions to control transmissions and direct communications between the transceiver and the interface to execute commands. | ¶33 | col. 2:10-17 |
| (d) the first program instructions including detecting communications directed by another of the relay units relative to the same appliance controller, signaling receipt...and directing communications to the other of the relay units... | The microcontroller detects communications from other Z-Wave nodes (repeaters), sends acknowledgement signals, and sends status updates to other relay units in the network. | ¶34 | col. 2:18-24 |
| (e) the second program instructions including detecting relay communications directed between the another of the relay units and a different relay unit, transmitting the relay communications, detecting a reply...and transmitting the reply... | A Z-Wave node acts as a repeater, detecting and transmitting messages between two other Z-Wave nodes (e.g., from the primary controller to a distant node, or from one node to another). | ¶35 | col. 2:25-31 |
| wherein at least some of the relay units communicate with others of the relay units by relay communications using at least two others of the relay units. | The Accused Instrumentality allegedly uses a Z-Wave mesh network where communication between distant nodes is routed through at least two intermediate repeaters. The complaint includes a diagram illustrating routing via multiple repeaters. (Compl. p. 20). | ¶35 | col. 2:32-35 |
- Identified Points of Contention:
- Scope Questions: The claims of the ’245 Patent recite communication between "another of the relay units" and "a different relay unit." This raises the question of whether this language can be construed to cover communications originating from or directed to the "primary controller" in the accused Z-Wave system, or if it is limited to communications between peer-level nodes.
- Technical Questions: The complaint alleges the accused Z-Wave network communicates using "at least two others of the relay units." A key question is what evidence exists that the accused products, as sold and used, necessarily and regularly perform this specific multi-hop routing, as opposed to it being a theoretical capability of the underlying Z-Wave protocol that is only used in specific, large-scale deployments.
V. Key Claim Terms for Construction
The Term: "headend computer" (’166 Patent)
- Context and Importance: This term is foundational to the asserted claim of the now-unenforceable ’166 Patent. Its interpretation would have determined whether the accused "Protect America Touchscreen Control panel" met a central limitation of the claim.
- Intrinsic Evidence for a Broader Interpretation: The specification refers to the "headend control computer (HCC)" as a potentially conventional "personal computer," which could support interpreting the term broadly to cover a range of central control devices. (’166 Patent, col. 4:15-18).
- Intrinsic Evidence for a Narrower Interpretation: The patent figures depict the "headend computer" as part of a more complex "headend control station" with a "hub" and connections to external satellite communications, suggesting a more sophisticated system than a consumer-grade control panel. (’166 Patent, Fig. 1).
The Term: "another of the relay units" (’245 Patent)
- Context and Importance: This term is critical to the infringement analysis for the '245 Patent. The infringement theory depends on whether the accused system's "primary controller" can be considered "another of the relay units." Practitioners may focus on this term because it appears to describe a peer-to-peer communication architecture, which may not align with the centralized, primary-controller-based architecture alleged for the accused Z-Wave system.
- Intrinsic Evidence for a Broader Interpretation: The patent does not explicitly define the term or exclude a central controller from being considered a "relay unit." A plaintiff may argue that any node in the network, including the controller, qualifies.
- Intrinsic Evidence for a Narrower Interpretation: The claim language distinguishes between communications involving "the same appliance controller" and those involving "another of the relay units" and "a different relay unit," which may suggest that the terms refer to distinct peer nodes rather than a central controller. (’245 Patent, Claim 1).
VI. Other Allegations
- Indirect Infringement: The complaint does not include a separate count for indirect infringement. However, it alleges facts that may support such a claim by stating that Defendant sells Z-Wave products and describes their mesh networking and repeater functionality, which could be construed as an allegation of inducing infringement by providing the means and instructions for customers to use the system in an infringing manner. (Compl. ¶¶ 20, 35).
- Willful Infringement: The complaint does not contain allegations of willful infringement. It alleges only that Defendant had "constructive notice of the ‘166 Patent and the ‘245 Patent by operation of law," which does not meet the standard of pre-suit knowledge of the patent and infringement required for a willfulness claim. (Compl. ¶38).
VII. Analyst’s Conclusion: Key Questions for the Case
Enforceability: A threshold and likely dispositive issue is the legal status of the asserted patents. With all claims of the ’166 Patent cancelled during re-examination, any claims for its infringement are moot. The case now rests entirely on the ’245 Patent.
Claim Scope vs. System Architecture: A core issue for the ’245 Patent will be one of definitional scope: can the claim language describing a peer-to-peer relay architecture (e.g., communication "directed by another of the relay units") be construed to read on the accused Z-Wave system's architecture, which is described as having a "primary controller" that directs network traffic?
Evidentiary Proof of Operation: A key factual question will be one of functional proof: what evidence can Plaintiff provide to demonstrate that the accused Z-Wave products, as actually sold and operated by consumers, necessarily and consistently "communicate... using at least two others of the relay units," as required by the claim, versus this being a theoretical capability of the protocol not always practiced?