DCT
5:18-cv-00718
Charles Shamoon v. City Of San Antonio
Key Events
Amended Complaint
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: Munsch Hardt Kopf & Harr, PC
- Case Identification: 5:18-cv-00718, W.D. Tex., 09/05/2024
- Venue Allegations: Venue is alleged to be proper in the Western District of Texas because Defendant CPS Energy was formed under Texas law and maintains its principal place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s smart thermostat programs, which allow customers to remotely control home environmental systems via mobile applications, infringe a patent related to remote device control using cellular networks and location-based triggers.
- Technical Context: The technology resides in the smart home and energy management sector, where remote control of HVAC systems via smartphones provides both consumer convenience and utility-level demand management.
- Key Procedural History: The complaint notes that after the original complaint in this litigation was filed, Defendant CPS Energy and a third party challenged the patent-in-suit in inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). The PTAB ultimately found that the challenger failed to prove the unpatentability of asserted dependent claims 2, 9, and 11, a procedural outcome that may narrow the scope of potential invalidity defenses in this case.
Case Timeline
| Date | Event |
|---|---|
| 2004-11-18 | ’655 Patent Priority Date (Provisional App. 60/522,887) |
| 2017-03-21 | ’655 Patent Issue Date |
| 2024-09-05 | Second Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,602,655 - "Ubiquitous Connectivity and Control System for Remote Locations"
The Invention Explained
- Problem Addressed: The patent’s background section describes the limitations of existing remote-control technologies for monitoring and managing environmental conditions in geographically remote structures like vacation homes or businesses (U.S. Patent No. 9,602,655, col. 1:29-52). Prior art systems were described as lacking the ability to monitor a range of environmental factors, alert owners to anomalies, and allow for remote re-configuration of device parameters.
- The Patented Solution: The invention discloses a system where a “base control unit” installed in a building interfaces with environmental devices (e.g., an HVAC system) and communicates bi-directionally with a user’s “cellular remote unit” (e.g., a cellular phone) over a cellular network using digital messages (’655 Patent, col. 4:56-65). A key feature is the use of the remote unit's geographical position data to automate control functions, such as adjusting a thermostat when the user’s device comes within a certain distance of the building (’655 Patent, col. 10:25-40).
- Technical Importance: The technology aimed to provide a more integrated and automated approach to remote home control than prior systems that relied on local-only communication (e.g., infrared) or manual dial-in connections via landlines (’655 Patent, col. 2:2-27).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 9, and 11 (’655 Patent, col. 13:58-14:52; Compl. ¶¶ 21-24, 26, 43).
- The essential elements of independent claim 1 include:
- A base unit configured to communicate with an environmental device and a cellular remote unit.
- A first communication interface to receive information from and send instructions to the environmental device.
- A wireless communication interface to send a first digital message (containing environmental information) to, and receive a second digital message (containing a command) from, the cellular remote unit via a cellular network.
- A microcontroller to process the command from the second message and provide a control instruction to the environmental device.
- The cellular remote unit is configured to determine its position data, determine when it is outside a geo-fence, and transmit a notification via a simple message service in response to that determination.
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant’s “Total Connect Comfort” and “Home Manager” branded systems and services (Compl. ¶ 30).
Functionality and Market Context
- The complaint alleges these systems provide customers with mobile applications for remotely monitoring and controlling smart thermostats, including Honeywell and Radio thermostat devices (Compl. ¶¶ 30, 34, 39). The marketing materials referenced in the complaint promote these systems as a way to "save electricity and lower your home energy bill" by enabling remote temperature control and participation in utility-managed "conservation events" (Compl. ¶ 31 & Fig. 1). A screenshot of the "CPS Energy Home Manager" app indicates functionality for viewing energy usage and managing multiple devices (Compl. ¶ 37 & Fig. 3). The complaint further alleges that the systems include a geo-fencing feature that "uses the GPS location on a user's mobile to set location-based triggered events" (Compl. ¶ 38).
IV. Analysis of Infringement Allegations
’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 smart thermostat systems, including Honeywell and Radio thermostat devices, serve as the base unit, communicating with the HVAC system (environmental device) and the user's mobile device (cellular remote unit). | ¶¶ 30, 34, 39 | col. 4:58-60 |
| a first communication interface configured to receive environmental information from the environmental device and to send a control instruction to the environmental device; | The smart thermostats receive temperature readings from the HVAC system and send control instructions, such as increasing or decreasing room temperature. | ¶ 39 | col. 5:6-11 |
| a wireless communication interface configured to send a first message to the cellular remote unit via a cellular communications network and to receive a second message from the cellular remote unit... | The accused systems communicate with the user's mobile app over the internet and cellular networks, sending system status information and receiving user commands. A screenshot depicts the app's interface for receiving temperature information and sending commands (Compl. ¶ 33 & Fig. 2). | ¶¶ 30, 37 | col. 5:21-29 |
| 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 smart thermostats contain processing components that interpret commands received from the mobile app and execute corresponding control instructions on the HVAC system. | ¶¶ 37, 39 | col. 5:3-5 |
| wherein the cellular remote unit is configured to determine position data...and determine when the cellular remote unit is outside a geo-fence, wherein the cellular remote unit is configured to transmit a notification via a simple message service responsive to determining that the cellular remote unit is outside of the geo-fence. | The accused systems allegedly include a "geo-fencing" feature, which uses the GPS location on a user's mobile device to set location-based triggered events. | ¶ 38 | col. 10:59-67 |
- Identified Points of Contention:
- Scope Questions: A potential issue is whether the term "base unit" as described in the patent—a system of distinct modules including a wireless module, microcontroller, and various interfaces—can be construed to read on the potentially more integrated architecture of a modern smart thermostat as alleged in the complaint.
- Technical Questions: The claim requires the remote unit to transmit a notification "via a simple message service." This language originates from a 2004 priority date when SMS was a primary mode of cellular data messaging (’655 Patent, col. 7:10-12). A central question may be whether the modern push notifications likely used by the accused mobile apps perform the function required by this claim limitation, or if there is a technical mismatch between the claimed "simple message service" and the accused functionality.
V. Key Claim Terms for Construction
The Term: "simple message service"
Context and Importance: This term appears in the final limitation of claim 1, which requires the cellular remote unit to transmit a notification "via a simple message service" upon a geo-fence event. Its construction is critical because the accused systems likely use modern, internet-based push notifications rather than the Short Message Service (SMS) technology prevalent at the patent's 2004 priority date. The viability of the infringement allegation for this element may depend on whether this term is limited to SMS or can encompass newer notification technologies.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define "simple message service" as being limited to SMS. An argument could be made that the term should be given its plain and ordinary meaning in the context of the invention, which is a service for sending simple messages, regardless of the specific underlying protocol.
- Evidence for a Narrower Interpretation: The specification repeatedly and specifically refers to "SMS ('simple message service')" as the data path for communication between the remote and base units (’655 Patent, col. 7:10-12; col. 10:46-48). This explicit equation of the term with SMS could support an interpretation that limits the claim scope to that specific technology.
The Term: "geo-fence"
Context and Importance: Geo-fencing is a specific, advanced feature recited in claim 1 and is explicitly alleged to be part of the accused systems (Compl. ¶ 38). The definition of what constitutes a "geo-fence" under the patent will be central to determining infringement of this limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the feature functionally as programming a "user-determined distance" from the base unit and having the remote unit report when it "travels a distance that exceeds the programmed distance" (’655 Patent, col. 10:57-62). This suggests a focus on the functional outcome of location-based boundary crossing.
- Evidence for a Narrower Interpretation: The detailed description of the preferred embodiment ties the functionality to specific technical details, including processing "NEMA data received from the GPS component" and transmitting results via "port-addressed SMS to the base control unit" (’655 Patent, col. 10:41-48). This could support a narrower construction requiring these specific implementation details.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant instructs customers on how to use the accused systems in an infringing manner through promotional materials and other information available on its website (Compl. ¶¶ 45, 48). It also pleads contributory infringement, alleging the accused systems are "especially made or especially adapted" for infringing the patent and are not "staple articles or commodities of commerce suitable for substantial non-infringing use" (Compl. ¶ 50).
- Willful Infringement: While not using the word "willful," the complaint alleges Defendant has had notice of the ’655 Patent "at least as early as the filing of the original Complaint" and has continued its allegedly infringing activities despite this knowledge (Compl. ¶¶ 42, 47). These allegations may form the basis for a later claim of willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological translation: Can the claim term "simple message service," which is rooted in the patent's 2004 priority date and explicitly linked to SMS in the specification, be construed to cover the modern, IP-based push notifications used by the accused smartphone applications?
- A second key question will be one of claim scope: Does the "base unit" recited in the claims, which the patent specification depicts as a system of interconnected modules, read on the integrated hardware and software architecture of the accused smart thermostat systems?
- Finally, a key procedural question will be the impact of the prior IPR proceeding: How will the PTAB's decision to uphold the validity of asserted dependent claims 2, 9, and 11 against a patentability challenge influence Defendant's ability to mount an invalidity defense and potentially focus the case primarily on questions of infringement and claim construction?