DCT

1:23-cv-00925

Graphite Charging Co LLC v. Tesla Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00925, W.D. Tex., 08/04/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant is headquartered and maintains a regular and established place of business in the district, where it has also allegedly committed acts of infringement.
  • Core Dispute: Plaintiff alleges that Defendant’s electric vehicle charging systems and energy optimization software infringe patents related to monitoring EV charging processes for interruptions and adaptively managing power consumption in response to grid conditions.
  • Technical Context: The technology concerns the intelligent management of electric power flow for electric vehicles and related energy systems, a field of increasing importance for grid stability and efficiency as EV adoption accelerates.
  • Key Procedural History: The patents-in-suit were originally assigned to International Business Machines Corporation (IBM) and were subsequently assigned to Plaintiff Graphite Charging Company LLC in May 2022. The complaint alleges that Plaintiff provided Defendant with notice of the patents-in-suit prior to filing the lawsuit.

Case Timeline

Date Event
2008-08-19 U.S. Patent No. 8,103,391 Priority Date
2008-10-24 U.S. Patent No. 8,291,243 Priority Date
2012-01-01 Alleged Infringement of '391 Patent Begins (earliest date referenced)
2012-01-24 U.S. Patent No. 8,103,391 Issue Date
2012-10-16 U.S. Patent No. 8,291,243 Issue Date
2022-05-10 Patents-in-Suit Assigned to Plaintiff
2023-08-04 Complaint Filing Date

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

U.S. Patent No. 8,103,391 - System for Detecting Interrupt Conditions During an Electric Vehicle Charging Process

(Issued January 24, 2012)

The Invention Explained

  • Problem Addressed: The patent’s background section notes that as electric vehicles (EVs) became more common, charging scenarios grew more complex than simply plugging into a home outlet (Compl. ¶28-29). These new scenarios, involving public charging stations and multiple parties, required a more sophisticated infrastructure to manage the "transaction" of energy (Compl. ¶29; ’391 Patent, col. 6:65-67).
  • The Patented Solution: The invention describes a system that actively monitors an EV charging process for a set of predefined "interrupt conditions" ('391 Patent, Abstract). Upon receiving a start request from an "energy transaction execution engine," a monitor observes operational parameters; if it detects an interruption—such as a device fault, a violation of a user preference (e.g., price cap), or a data service failure—it sends a response to the engine to terminate the charging session ('391 Patent, col. 10:9-15).
  • Technical Importance: The complaint asserts this invention provided a "more complete, flexible, robust and interoperable system" compared to prior art, which lacked real-time monitoring and reaction to a defined set of multiple, complex conditions during charging (Compl. ¶37).

Key Claims at a Glance

  • The complaint asserts claims 1-20, with a detailed breakdown of independent claim 8 (Compl. ¶81, ¶83).
  • Independent claim 8 is directed to a computer program product comprising a tangible storage medium with instructions to:
    • Monitor operational parameters for interruptions after receiving a start request from an "energy transaction execution engine."
    • Detect interruptions that conform to predefined conditions, where interruptions include at least one of a "device capabilities interruption," a "preference interruption," or a "data services interruption."
    • Send a response to the execution engine to terminate the charging process upon detecting an interruption.
  • The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶81).

U.S. Patent No. 8,291,243 - Adaptive Computing Responsive to Environmental Conditions

(Issued October 16, 2012)

The Invention Explained

  • Problem Addressed: The patent specification explains that prior art for reducing computer power consumption operated on a "localized level," reacting to internal factors like idle time or component temperature ('243 Patent, col. 1:41-49). This approach failed to consider larger "contextual conditions" such as the cost of power, the source of power, or the overall demand on the power grid (Compl. ¶51; ’243 Patent, col. 4:11-19).
  • The Patented Solution: The invention describes acquiring and analyzing "operating environmental condition data" relevant to the power grid. If the analysis determines a "high electric power demand indication," the system causes a computational device to automatically reduce its power consumption (’243 Patent, Abstract). This allows individual devices to respond intelligently to global grid conditions, not just local ones.
  • Technical Importance: The complaint alleges this technology created a framework for the "distributed and coordinated" control of both power supply and demand, enabling a collection of devices to enhance grid stability and avoid using inefficient "peaker" plants during high demand (Compl. ¶53, ¶56).

Key Claims at a Glance

  • The complaint asserts claims 1-20, with a detailed breakdown of independent claim 15 (Compl. ¶104, ¶106).
  • Independent claim 15 is directed to an article of manufacture comprising a computer-readable tangible storage medium with instructions to:
    • Acquire "operating environmental condition data" relevant to power generation in a grid system from a feed input.
    • Analyze this data to determine an "indication of a high demand for electric power."
    • Cause a computational device to automatically reduce its power consumption if a high demand indication is determined.
  • The complaint reserves the right to assert additional claims (Compl. ¶120).

III. The Accused Instrumentality

Product Identification

  • For the ’391 Patent, the accused instrumentalities are Tesla’s "EV Tesla Charging Stations" (including Superchargers, Destination Chargers, and Wall Connectors), "Tesla electric vehicles," and the "Tesla App" (Compl. ¶61, ¶64).
  • For the ’243 Patent, the accused instrumentality is "Tesla's Suite of Optimization Software Solutions - Autonomous Control" and its components, including Powerhub, Powerwall, Autobidder, Microgrid Controller, and Opticaster (Compl. ¶68).

Functionality and Market Context

  • The complaint alleges that the accused charging stations, vehicles, and app work as an integrated system to manage charging (Compl. ¶67). The charging stations are alleged to "continuously monitor the charging of electric vehicles, in part, by using real time interrupt handling for fault conditions and user preference conditions" (Compl. ¶63).
  • "Autonomous Control" is alleged to be an "advanced ecosystem of software" that uses machine learning and real-time control algorithms for utility bill reduction, demand response participation, and microgrid control (Compl. ¶69). It allegedly adapts power consumption in response to environmental conditions to "maximize economic value" (Compl. ¶70-71).

IV. Analysis of Infringement Allegations

’391 Patent Infringement Allegations

Claim Element (from Independent Claim 8) Alleged Infringing Functionality Complaint Citation Patent Citation
a computer-program product for managing a charging process of an electric vehicle, the computer program product comprising, a tangible computer-recordable storage medium... Defendant's EV Tesla Charging Stations utilize a "control compartment with various computer boards" that function as a physical device storing electronic data. ¶84 col. 2:40-50
first program instructions to monitor a set of operational parameters ... for one or more interruptions in response to receiving, from an energy transaction execution engine, a request signaling a start of the charging process... The Charging Stations' "monitoring firmware" is alleged to monitor for fault and user preference conditions after receiving a start request from the "control firmware," which is alleged to be the "energy transaction execution engine." ¶85, ¶86, ¶87 col. 12:1-7
second program instructions to detect the one or more interruptions ... which conform to a set of pre defined interrupt conditions, wherein the one or more interruptions comprise at least one of a device capabilities interruption, a preference interruption, and a data services interruption The Charging Stations allegedly detect device capabilities interruptions (e.g., battery malfunction, over-temperature) and preference interruptions (e.g., dynamic load management configurations). Data services interruptions are alleged upon information and belief. ¶88, ¶89 col. 10:45-48
third program instructions to send a response to the energy transaction execution engine to terminate the charging process in response to detecting the one or more interruptions... The "monitoring firmware" allegedly sends a response to the "control firmware" when a fault or preference condition occurs, which then stops the charging process. ¶90 col. 14:1-7

Identified Points of Contention

  • Scope Questions: The complaint maps its "control firmware" and "monitoring firmware" allegations onto the patent's "energy transaction execution engine" and "interrupt monitor" terms (Compl. ¶86). This raises the question of whether the accused products, which may use a more integrated control architecture, contain the distinct software components as contemplated by the patent’s claims and figures.
  • Technical Questions: The complaint alleges the detection of "data services interruptions" on "information and belief" (Compl. ¶89). A factual question for the court will be what evidence demonstrates that the accused products detect interruptions originating from external data sources, as distinct from internal hardware faults or user-configured preferences.

’243 Patent Infringement Allegations

Claim Element (from Independent Claim 15) Alleged Infringing Functionality Complaint Citation Patent Citation
An article of manufacture, comprising: a computer readable tangible storage medium having computer readable program code embodied therewith... Tesla's Autonomous Control is alleged to be an "advanced ecosystem of software" that is manufactured and embodied on a computer-readable tangible storage medium. ¶107 col. 2:6-10
acquire operating environmental condition data relevant to the generation of electric power in a power grid system from an operating environment feed input... Tesla's Autonomous Control, via its Powerhub platform, allegedly "acquires various energy source loads" and manages energy assets, including solar and storage. The Powerhub Interface shows the acquisition of real-time power data from the grid, solar, and battery. (Compl. p. 26, FIG 1). ¶108 col. 2:56-62
analyze the operating environmental condition data to determine an indication of a high demand for electric power from the power grid system... Autonomous Control allegedly includes an optimization engine (Opticaster) that "forecasts and optimizes energy in real-time based on operating environmental conditions." The Microgrid Controller Interface is provided as an example of real-time analysis. (Compl. p. 27, FIG 3). ¶109 col. 5:62-65
cause a computational device to automatically reduce a current amount of consumption of electric power from the power grid system... if the analyzing determines the high electric power demand indication. The Microgrid Controller feature allegedly uses a "cost based optimization algorithm" to automatically curtail generators and shed loads, while Opticaster allegedly "reduces energy spending" and delivers power to the grid "during times of need." ¶110 col. 6:11-20

Identified Points of Contention

  • Scope Questions: The patent claims adapting power consumption in response to conditions on a "power grid system." The complaint points to Tesla's "Microgrid Controller" feature as infringing (Compl. ¶110), which can operate in an off-grid context. This raises the question of whether the term "power grid system" can be construed to read on a localized, potentially isolated microgrid.
  • Technical Questions: The patent requires power reduction in response to a "high electric power demand indication." The complaint states the accused system acts to "maintain system operation most cost effectively" and "maximize economic value" (Compl. ¶70, ¶110). A central technical question will be whether the accused system's actions are driven by the specific technical trigger claimed (high grid demand) or by general economic optimization, which may only sometimes correlate with it.

V. Key Claim Terms for Construction

Term ('391 Patent): "energy transaction execution engine"

  • Context and Importance: This term is a core architectural component of the claimed system. The infringement theory depends on successfully mapping Tesla’s "control firmware" to this claimed "engine" (Compl. ¶86). Practitioners may focus on this term because its construction will determine if Tesla's potentially more monolithic software architecture falls within the scope of the patent's seemingly modular claim structure.
  • Intrinsic Evidence for a Broader Interpretation: The specification describes the engine’s function as sending a start request and receiving a termination response (’391 Patent, col. 12:1-7, col. 14:4-7). This functional language may support an interpretation where any software module performing these roles constitutes an "engine," regardless of its integration with other components.
  • Intrinsic Evidence for a Narrower Interpretation: The patent’s Figure 3 depicts the ENERGY TRANSACTION EXECUTION ENGINE (316) as a distinct block, separate from the ENERGY TRANSACTION INTERRUPT MONITOR (320). This visual separation could support a narrower construction requiring a discrete, modular software component.

Term ('243 Patent): "operating environmental condition data"

  • Context and Importance: The definition of this term dictates the type of input that can trigger the claimed power reduction. Its construction is critical because the accused system is alleged to respond to a variety of economic and operational data (Compl. ¶69, ¶108).
  • Intrinsic Evidence for a Broader Interpretation: The specification provides a non-exhaustive list of examples, including "a spot price of electricity, a rate of change of price of electricity, weather conditions, time of day," and other data relevant to energy costs ('243 Patent, col. 4:56-59). This suggests the term is meant to be expansive.
  • Intrinsic Evidence for a Narrower Interpretation: The claim requires the data to be "relevant to the generation of electric power in a power grid system." This could support an argument that the data must be tied directly to power generation itself (e.g., the operational status of power plants, as described in col. 3:41-51), rather than downstream effects like market price or localized load, which are consequences of, not direct conditions of, generation.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendant induces infringement by providing customers with the accused products and "instructing users how to use" them in a manner that infringes (Compl. ¶97, ¶117). It further alleges contributory infringement, stating the products are "especially made or adapted for" infringing use and are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶98, ¶118).

Willful Infringement

The complaint alleges that Defendant had pre-suit knowledge of the patents. This knowledge is allegedly based on a notice letter sent by Plaintiff and on Defendant's "monitoring of patents through their ordinary course of business" (Compl. ¶73, ¶77, ¶115). The complaint notes that Defendant allegedly did not alter its conduct after receiving notice (Compl. ¶74).

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

  • A core issue will be one of architectural mapping: Can the allegedly integrated firmware in Tesla’s products be mapped onto the more modular "energy transaction execution engine" and "interrupt monitor" components claimed in the ’391 Patent, or is there a fundamental mismatch in system design?
  • A key evidentiary question will be one of causation: Does Tesla's Autonomous Control software reduce power consumption specifically because it detects a "high demand indication" on the grid as required by the ’243 Patent, or is its behavior driven primarily by economic optimization algorithms that may only coincidentally align with the conditions claimed in the patent?
  • A third question will concern definitional scope: Can the term "power grid system" in the ’243 Patent, which is described in the context of large-scale, interconnected utility infrastructure, be construed to cover the isolated "microgrids" that Defendant's accused software is also designed to manage?