DCT
5:18-cv-00718
Ubiquitous Connectivity LP v. City Of San Antonio
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ubiquitous Connectivity, LP (Texas)
- Defendant: City of San Antonio by and through its agent, City Public Service Board of San Antonio d/b/a CPS Energy (Texas)
- Plaintiff’s Counsel: Wayne Wright LLP; Heninger Garrison Davis, LLC
- Case Identification: 5:18-cv-00718, W.D. Tex., 09/26/2019
- Venue Allegations: Venue is alleged to be proper because Defendant resides in the Western District of Texas due to its formation under Texas law and its principal place of business being located there.
- Core Dispute: Plaintiff alleges that Defendant’s smart thermostat systems, which allow for remote monitoring and control via mobile applications, infringe patents related to on-demand bidirectional communication between a remote access unit and a base control unit.
- Technical Context: The technology concerns early-generation smart home systems, specifically enabling cellular phones to communicate with and control environmental devices like thermostats before the widespread adoption of modern smartphone app ecosystems.
- Key Procedural History: The patents-in-suit descend from a 2004 provisional application. Subsequent to the filing of this complaint, both asserted patents were subject to Inter Partes Review (IPR) proceedings at the U.S. Patent and Trademark Office. The resulting IPR certificates cancelled all claims asserted in this complaint (Claim 19 of the '935 Patent and Claim 1 of the '655 Patent), raising a threshold question about the viability of the action as pleaded.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-18 | Earliest Priority Date for '935 and '655 Patents |
| 2011-11-22 | U.S. Patent No. 8,064,935 Issues |
| 2017-03-21 | U.S. Patent No. 9,602,655 Issues |
| 2019-09-26 | First Amended Complaint Filed |
| 2021-09-21 | IPR Certificate issues for '655 Patent, cancelling Claim 1 |
| 2023-12-12 | IPR Certificate issues for '935 Patent, cancelling Claim 19 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,064,935 - Ubiquitous Connectivity and Control System for Remote Locations (Issued Nov. 22, 2011)
The Invention Explained
- Problem Addressed: The patent describes a market in 2004 where remote control of home systems was cumbersome. Existing solutions relied on land-line telephones with "tones or cryptic, hard-to-understand, digitized voice prompts" or limited-range technologies like power-line carriers (e.g., X10) that were confined to a single building (’935 Patent, col. 2:36-52). Integrating cellular phones was not user-friendly, often requiring manual dialing and command entry (’935 Patent, col. 7:3-9).
- The Patented Solution: The invention proposes a system comprising a "base control unit" connected to an "environmental device" (like a thermostat) and a "remote control unit" (a cellular phone). The system uses the cellular network's Short Message Service (SMS) to create an "on-demand digital, private, and direct communications interface" (’935 Patent, col. 3:10-13, Fig. 1). This allows for automated, two-way communication without direct user intervention like dialing, enabling features like remote status updates and control from anywhere.
- Technical Importance: The technology aimed to bridge the gap between incompatible legacy home control systems and the emerging capabilities of cellular networks, promising a more seamless and "ubiquitous" remote control experience than was previously available (’935 Patent, col. 2:57-61).
Key Claims at a Glance
- The complaint asserts independent Claim 19 (Compl. ¶45).
- Essential elements of Claim 19 include:
- A base unit interfaced with an environmental device, configured to receive a status of the device.
- A transmitter associated with the base unit, configured to send a first wireless message with the current status to a remote unit.
- A receiver associated with the base unit, configured to receive a second wireless message from the remote unit containing a command.
- A controller associated with the base unit, configured to send the command to the environmental device.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,602,655 - Ubiquitous Connectivity and Control System for Remote Locations (Issued Mar. 21, 2017)
The Invention Explained
- Problem Addressed: The ’655 Patent, a continuation, addresses the same technical problems as the ’935 Patent: the inconvenience and limitations of prior art remote monitoring systems, which were not well-integrated with mobile cellular devices (’655 Patent, col. 2:42-56).
- The Patented Solution: The invention focuses on the "base unit" itself, describing it as a system with distinct communication interfaces for communicating with both an environmental device (e.g., a thermostat) and a remote cellular unit via a cellular network (’655 Patent, col. 13:1-24, Fig. 4). A key feature is the ability to use location data from the remote unit (e.g., GPS) to trigger actions, a concept known as geo-fencing, such as adjusting the thermostat when a user leaves or approaches home (’655 Patent, col. 8:24-40).
- Technical Importance: This patent elaborates on creating a more intelligent control hub that can react not just to direct commands but also to contextual information like the user's physical location, automating environmental controls in a novel way for the time (’655 Patent, col. 8:29-33).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶60).
- Essential elements of Claim 1 include:
- A first communication interface to receive environmental information from and send a control instruction to an environmental device.
- A wireless communication interface to send a first message (environmental information) and receive a second message (a command) from a cellular remote unit.
- A microcontroller to process the command and send the control instruction.
- The system is further configured to determine the position of the cellular remote unit and transmit a notification via SMS when the unit is outside a "geo-fence."
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The "Total Connect Comfort" and "Home Manager" branded systems and services ("Accused Products and Services") (Compl. ¶30).
Functionality and Market Context
The complaint alleges these are remotely controllable smart thermostat systems offered to CPS Energy customers (Compl. ¶30). The systems include smart thermostats (e.g., Honeywell, Radio thermostats) that interface with a home's HVAC system (Compl. ¶45). Users can download a corresponding mobile app (e.g., "Total Connect Comfort app," "Home Manager app") on a smartphone or tablet (Compl. ¶31, ¶35). Through the app, users can remotely monitor and change temperature settings, set schedules, and receive alerts (Compl. ¶13, Description). The complaint specifically alleges the systems use geo-fencing, which uses the mobile device's GPS location to trigger events, such as setting the thermostat to an "Away" mode (Compl. ¶39).
IV. Analysis of Infringement Allegations
’935 Patent Infringement Allegations
| Claim Element (from Independent Claim 19) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base unit operatively interfaced with an environmental device... | The system incorporates a base unit (Honeywell and Radio smart thermostats) interfaced with an environmental device (the thermostat itself, which controls the HVAC system) (Compl. ¶45, Fig. 1). This is depicted in a marketing image for the "Smart Thermostat" program (Compl. p. 12, Fig. 1). | ¶45 | col. 4:56-61 |
| a transmitter associated with said base unit... configured to send a first wireless message including the current status of the environmental device... | The system allows users to view current indoor temperature and system settings on their mobile app, which constitutes receiving a status message from the base unit (Compl. ¶38, ¶40, Fig. 2). App screenshots show the display of current temperature (Compl. p. 13, Fig. 2). | ¶38, ¶40 | col. 7:29-32 |
| a receiver associated with said base unit... configured to receive a second wireless message... including a command for the environmental device... | Users can send commands from the mobile app to change thermostat settings or schedules, which are received by the base unit (Compl. ¶38, Fig. 3). The "Home Manager" app is described as allowing users to remotely control their HVAC (Compl. p. 14, Fig. 3). | ¶38 | col. 7:48-52 |
| a controller operatively associated with the base unit... configured to send the command to the environmental device. | Upon receiving a command from the app, the base unit's controller executes the command, for example, by sending a signal to the HVAC system to increase or decrease the temperature (Compl. ¶40). | ¶40 | col. 4:56-59 |
Identified Points of Contention
- Threshold Legal Question: The primary issue is that Claim 19 was cancelled in IPR proceedings concluded in 2023. This raises the question of whether Plaintiff has a viable claim for infringement of the ’935 Patent under the current complaint.
- Technical Question: Assuming the claim were valid, a question would be whether the accused system, which likely uses internet-based (TCP/IP) communication between the app and a server, meets the "wireless message" limitations, which the patent specification heavily links to SMS and cellular data bearer services (’935 Patent, col. 3:1-6; col. 7:10-17).
’655 Patent 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 to communicate with a cellular remote unit... | The accused system comprises a base unit (smart thermostat) that communicates with an environmental device (HVAC system) and a cellular remote unit (smartphone with the app) (Compl. ¶60). | ¶60 | col. 4:56-59 |
| a wireless communication interface configured to... receive a second digital communications message including a command... | The base unit receives commands from the user's app, such as instructions to change temperature (Compl. ¶38). | ¶38 | col. 4:56-61 |
| a microcontroller configured to process the second message, to provide the control instruction based on the command... | The base unit's internal processor (microcontroller) processes the command from the app and sends the corresponding instruction to the HVAC system (Compl. ¶40). | ¶40 | col. 4:58-59 |
| wherein the cellular remote unit is configured to determine position data... and determine when the cellular remote unit is outside a geo-fence... | The complaint alleges that the accused systems support a "geo-fencing feature that switches the thermostat to an Away mode when you leave the house," which requires determining the remote unit's position relative to a boundary (Compl. ¶39). | ¶39 | col. 8:64-67 |
| wherein the cellular remote unit is configured to transmit a notification via a simple message service responsive to determining... | The geo-fencing feature necessarily requires the remote unit (phone) to transmit its location status or a trigger event to the system when it crosses the geo-fence boundary, which the claim requires to be done via SMS (Compl. ¶39). | ¶39 | col. 7:10-14 |
Identified Points of Contention
- Threshold Legal Question: As with the ’935 Patent, the asserted Claim 1 was cancelled in IPR proceedings concluded in 2021. This raises the fundamental question of whether a cause of action for infringement of the ’655 Patent exists as pleaded.
- Scope Question: Does the term "simple message service" read on the modern push notifications or API calls likely used by the accused apps to communicate the geo-fence trigger, or is it limited to the technical definition of SMS as understood in the patent? (’655 Patent, col. 7:10-14).
V. Key Claim Terms for Construction
The analysis below is based on the asserted claims, which have since been cancelled by the USPTO. Its relevance is therefore limited to understanding the original dispute.
The Term: "base unit" (from '935 Claim 19 and '655 Claim 1)
- Context and Importance: This term defines the core hardware at the monitored location. Its scope is critical because the infringement theory depends on mapping the accused Honeywell and Radio smart thermostats to this claimed element.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the base unit in functional terms as a module that interfaces with environmental subsystems and communicates with a remote unit, containing a microcontroller and various communication interfaces (’935 Patent, col. 4:56-61). This could support a reading on any device performing these functions.
- Evidence for a Narrower Interpretation: The detailed description and Figure 4 show the "base control unit 16" as a distinct device with a specific architecture, including a wireless module (70), microcontroller (106), and numerous specific I/O ports (72-89). An argument could be made that the term is limited to a device having this disclosed structure, not just any integrated smart thermostat.
The Term: "geo-fence" (from '655 Claim 1)
- Context and Importance: This feature is a key part of the infringement allegation for the ’655 Patent. The definition will determine whether the accused product's location-based services meet the specific requirements of the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide an explicit definition, describing the concept functionally as using geographic information to trigger an action when a user "has traveled beyond a set distance from the home" (’655 Patent, col. 8:64-67). This could encompass any system that uses location to trigger an event based on crossing a virtual boundary.
- Evidence for a Narrower Interpretation: The patent consistently describes the process as comparing GPS-derived position data (latitude, longitude) against a user-programmed distance from the base unit's location (’655 Patent, col. 8:41-63). A narrower interpretation might require this specific implementation (GPS data compared to a radial distance) rather than other forms of location-based triggers (e.g., Wi-Fi network detection, cell tower triangulation).
VI. Other Allegations
Indirect Infringement
The complaint alleges induced infringement, stating that Defendant encourages and instructs customers on how to use the Accused Products in an infringing manner through its website, informational brochures, and promotional materials (Compl. ¶46, ¶61). It is also alleged that Defendant offers design and integration services to assist customers (Compl. ¶49, ¶64). Contributory infringement is alleged based on the sale of components that are a material part of the invention and have no substantial non-infringing uses (Compl. ¶50, ¶65, ¶52, ¶67).
Willful Infringement
The complaint alleges willfulness based on Defendant's continued infringement despite having knowledge of the patents "as early as the filing of this complaint" (Compl. ¶47, ¶62). This frames the willfulness allegation as being based on post-suit conduct.
VII. Analyst’s Conclusion: Key Questions for the Case
The central issue in this case is no longer a technical dispute over infringement but a legal and procedural one arising from post-filing events at the USPTO.
Viability of the Complaint: The foremost question is one of legal standing: given that the IPR proceedings for both the '935 and '655 patents resulted in the cancellation of all asserted claims, does the Plaintiff have a viable cause of action under the First Amended Complaint as it is currently written?
Amendment and Scope: A related question is whether the Plaintiff can or will seek to amend its complaint to assert infringement of the claims that survived IPR (e.g., Claim 12 of the ’935 Patent; Claims 2, 9, and 11 of the ’655 Patent). This would shift the focus to a new infringement analysis of different claim language against the accused products.
The "Geo-Fence" Implementation: Should the case proceed on surviving claims that include a geo-fencing limitation, a key evidentiary question will be one of technical implementation: how do the accused products' location-based features actually function? The case could turn on whether they use "simple message service" (SMS) as recited in the patent family, or if they rely on modern, internet-based data protocols, and whether the latter falls within the scope of the claims.