Kortek Industries Pty Ltd v. Globe Electric Co Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Kortek Industries Pty Ltd. (Australia)
  • Defendant: Globe Electric Company Inc. (Canada)
  • Plaintiff’s Counsel: Spencer Fane LLP
• Case Identification: 6:22-cv-00567, W.D. Tex., 06/02/2022
• Venue Allegations: Venue is alleged to be proper because the Defendant is a foreign corporation, and such entities may be sued in any judicial district pursuant to 28 U.S.C. § 1391(c).
• Core Dispute: Plaintiff alleges that Defendant’s Wi-Fi enabled smart home products infringe four patents related to systems and methods for wireless power and automation control.
• Technical Context: The technology at issue resides in the Internet of Things (IoT) and smart home sector, focusing on methods for wirelessly controlling power to electrical devices without relying exclusively on a central network hub.
• Key Procedural History: The complaint does not reference any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patents-in-suit.

Case Timeline

Date	Event
2011-02-16	Earliest Priority Date for ’377 and ’869 Patents
2011-11-07	Earliest Priority Date for ’427 and ’313 Patents
2016-10-11	’377 Patent Issued
2017-03-07	’427 Patent Issued
2019-10-01	’869 Patent Issued
2020-12-08	’313 Patent Issued
2022-06-02	Complaint Filed

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

The patent documents for the first two asserted patents, U.S. Patent Nos. 9,465,377 and 9,590,427, were not provided with the complaint. The following two patents, for which documents were provided, are analyzed in full.

U.S. Patent No. 9,465,377 - "Wireless power, light and automation control"

• Patent Identification: U.S. Patent No. 9,465,377 (“the ’377 patent”), "Wireless power, light and automation control," issued October 11, 2016 (Compl. ¶12).
• Technology Synopsis: The complaint does not provide sufficient detail for analysis of the technology. The title suggests technology for wirelessly controlling power, lighting, and automation systems.
• Asserted Claims: At least Claim 1 (Compl. ¶26).
• Accused Features: The complaint accuses Defendant’s “WiFi-enabled devices,” such as smart plugs, of infringement (Compl. ¶18, ¶26).

U.S. Patent No. 9,590,427 - "Adaptable wireless power, light and automation system"

• Patent Identification: U.S. Patent No. 9,590,427 (“the ’427 patent”), "Adaptable wireless power, light and automation system," issued March 7, 2017 (Compl. ¶13).
• Technology Synopsis: The complaint does not provide sufficient detail for analysis of the technology. The title suggests an adaptable system for wirelessly controlling power and lighting.
• Asserted Claims: At least Claim 1 (Compl. ¶38).
• Accused Features: The complaint accuses Defendant’s “WiFi-enabled devices,” such as smart plugs, of infringement (Compl. ¶18, ¶38).

U.S. Patent No. 10,862,313 - "Adaptable Wireless Power, Light and Automation System"

• Patent Identification: U.S. Patent No. 10,862,313 ("the ’313 patent"), "Adaptable Wireless Power, Light and Automation System," issued December 8, 2020 (Compl. ¶14).

The Invention Explained

• Problem Addressed: The patent describes a challenge in wireless home automation where systems typically rely on either a non-peer-to-peer network (like a standard Wi-Fi WLAN with a central access point) or a peer-to-peer network (like Wi-Fi Direct). A WLAN system offers remote internet-based control but introduces security risks and a single point of failure at the access point, whereas a peer-to-peer system is more secure for local control but lacks remote accessibility (’313 Patent, col. 2:7-21, col. 2:30-36).
• The Patented Solution: The patent discloses a power control unit that contains a single wireless module capable of operating in two distinct modes. In a first "peer-to-peer" mode, the unit can connect directly to a controller like a smartphone. In a second "non-peer-to-peer" mode, it can operate as a client on a conventional Wi-Fi WLAN. The invention’s solution is the unit’s ability to be reconfigured by a user to switch between these two communication modes, providing architectural flexibility in a single device (’313 Patent, col. 3:56-65; col. 4:56-62).
• Technical Importance: This dual-mode adaptability allows a single hardware product to serve users who prioritize the simplicity and security of direct local control, as well as users who require integration into a broader, internet-connected smart home ecosystem (’313 Patent, col. 2:5-21).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶50).
• Essential elements of Claim 1 include:
  • A wireless control module operable for wireless communication with the personal controller, the module including an aerial, a radio transceiver, and a microcontroller.
  • The microcontroller being configured in a first mode to operate the wireless control module using a peer-to-peer communications standard.
  • The microcontroller being configured in a second mode to operate the wireless control module using a non-peer-to-peer communications standard to communicate with a network access point in a WLAN.
  • The microcontroller being configured to change from the first mode to the second mode upon receiving instructions from the personal controller.
  • A power control circuit configured to vary the supply of electricity to the light based on instructions from the personal controller.
• The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 10,429,869 - "Wireless Power, Light and Automation Control"

• Patent Identification: U.S. Patent No. 10,429,869 ("the ’869 patent"), "Wireless Power, Light and Automation Control," issued October 1, 2019 (Compl. ¶15).

The Invention Explained

• Problem Addressed: The patent’s background section notes that conventional home automation systems based on Wi-Fi typically require a central Wireless Access Point (AP). This reliance creates a single point of failure; if the AP is disabled, the entire automation system fails. Such systems can also suffer from data latency when the AP is overloaded (’869 Patent, col. 1:49-57).
• The Patented Solution: The invention describes a power control unit that establishes a direct, two-way, peer-to-peer wireless communications link with a controller, such as a smartphone. The power control unit achieves this by "simulating a network access point," which involves sending out a discovery message to initiate contact directly with the controller, thereby eliminating the need for a separate, pre-existing network router or hub to mediate the connection (’869 Patent, col. 3:11-24; FIG. 2).
• Technical Importance: This architecture simplifies the setup for smart device control and enhances reliability by removing the dependency on a central network hub, a key consideration for ensuring robust operation of IoT devices (’869 Patent, col. 6:31-38).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶62).
• Essential elements of Claim 1 include:
  • A microprocessor having a memory.
  • A power control circuit configured to implement a command from the microprocessor to vary the supply of electricity to the electrical apparatus.
  • A wireless communications transceiver operable for two-way, peer-to-peer communication with the mobile communications device.
  • The microprocessor is configured to always send, using the wireless control transceiver, a discovery message without passing through a wireless router or access point.
  • The wireless control transceiver is configured to operate by simulating a network access point in establishing a peer-to-peer link with the mobile communications device.
• The complaint does not explicitly reserve the right to assert dependent claims for this patent.

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are "Globe branded Wi-Fi Smart Home and plug products," referred to collectively as "Accused Products" (Compl. ¶18).

Functionality and Market Context

The complaint identifies the Accused Products as "WiFi-enabled devices" that are manufactured, used, tested, marketed, and sold in the United States (Compl. ¶18). The complaint does not provide specific technical details about the operation of these products beyond alleging that they practice the patents-in-suit. The products are generally understood to be smart plugs that allow users to remotely control power to appliances via a wireless network.

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that were not provided (Compl. ¶60, ¶72). The narrative infringement theories are summarized below.

Infringement Narrative: U.S. Patent No. 10,862,313

The complaint alleges that the Accused Products directly infringe at least claim 1 of the ’313 patent (Compl. ¶50). The narrative theory suggests that the Accused Products embody the claimed controller, which includes a wireless module and microcontroller that can be configured to operate in two distinct modes: a first "peer-to-peer" mode for direct connection to a device like a smartphone, and a second "non-peer-to-peer" mode for connecting to a standard WLAN access point. The infringement theory rests on the allegation that the products contain this dual-mode functionality and can be changed from one mode to the other based on user instructions, in addition to having a power control circuit to manage electricity flow (Compl. ¶50). Plaintiff refers to Exhibit G for detailed element-by-element mapping, which was not provided (Compl. ¶60).

Infringement Narrative: U.S. Patent No. 10,429,869

The complaint alleges that the Accused Products directly infringe at least claim 1 of the ’869 patent (Compl. ¶62). The core of the infringement theory is that the Accused Products operate as the claimed power control device by establishing a direct, peer-to-peer communication link with a user's controller (e.g., smartphone). This is allegedly accomplished by the device's wireless transceiver "simulating a network access point" and sending a "discovery message" to initiate the direct connection without routing through a separate hub, thereby allowing a user to control the device's internal power circuit (Compl. ¶62). Plaintiff refers to Exhibit H for detailed element-by-element mapping, which was not provided (Compl. ¶72).

Identified Points of Contention

• Scope Questions: A central question for the ’313 patent may be whether the accused products' firmware architecture allows for a change between a "peer-to-peer communications standard" and a "non-peer-to-peer communications standard" upon receiving instructions, as required by the claim. For the ’869 patent, a key question may be whether the term "simulating a network access point," as defined within the patent, reads on the specific direct-connect protocol (e.g., Wi-Fi Protected Setup) used by the accused smart plugs.
• Technical Questions: A factual dispute may arise over how the accused products actually establish wireless connections. For the ’869 patent, evidence will be needed to show that the product "always send[s]...a discovery message" to initiate contact, as opposed to passively waiting for a controller to initiate. For the ’313 patent, the analysis may focus on whether the product supports two fundamentally different, selectable communication modes or merely one mode with different setup options.

V. Key Claim Terms for Construction

U.S. Patent No. 10,862,313

• Term: "peer-to-peer communications standard" / "non-peer-to-peer communications standard" (Claim 1)
• Context and Importance: The claim requires a device that can operate using both types of standards and switch between them. The construction of these terms will be critical to determining if the accused products, which may use modern Wi-Fi protocols that blur traditional lines between ad-hoc and infrastructure modes, practice the claimed invention.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification provides examples, stating peer-to-peer may include "Wi-Fi Direct, Bluetooth" and non-peer-to-peer refers to connecting to a "Wi-Fi WLAN with an Internet connection," suggesting the terms are meant to capture broad functional categories rather than specific IEEE standards (’313 Patent, col. 2:1-12).
  • Evidence for a Narrower Interpretation: The detailed description and figures heavily contrast the specific operational flow of a Wi-Fi Direct connection (FIG. 5) with that of a standard Wi-Fi WLAN client connection (FIG. 6), which could support an argument that the terms are limited to these specific, disclosed architectures.

U.S. Patent No. 10,429,869

• Term: "simulating a network access point" (Claim 1)
• Context and Importance: This term describes the core technical action the claimed device must perform to establish the peer-to-peer link. Infringement will likely depend on whether the accused product's method for enabling a direct connection (e.g., its "soft AP" or Wi-Fi Direct Group Owner mode) meets the patent's definition of "simulating" an AP.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent contrasts its peer-to-peer system (FIG. 2) with a conventional system requiring a physical AP (FIG. 1), suggesting the term functionally means to enable direct connections where a separate AP would otherwise be required (’869 Patent, col. 3:25-29, col. 6:39-48).
  • Evidence for a Narrower Interpretation: The specification links this function to the specific capability of a Wi-Fi Direct device to "perform the functions of a Wi-Fi Access Point and appear to legacy Wi-Fi devices...as a Wi-Fi Access Point," which could be used to argue the term is limited to the technical implementation of a Wi-Fi Direct Group Owner role (’869 Patent, col. 6:39-44).

VI. Other Allegations

Indirect Infringement

The complaint alleges both induced and contributory infringement for all asserted patents. The inducement claims are based on allegations that Defendant provides materials such as "product manuals, brochures, videos, demonstrations, and website materials" that instruct and encourage customers to use the Accused Products in an infringing manner (e.g., Compl. ¶28, ¶39, ¶52, ¶64). The contributory infringement claims allege that Defendant supplies a material part of the claimed combination that is not a staple article of commerce (e.g., Compl. ¶27, ¶39, ¶51, ¶63).

Willful Infringement

Willfulness is alleged for all asserted patents based on Defendant’s alleged knowledge of infringement "since at least the date of this Complaint" (e.g., Compl. ¶30, ¶42, ¶54, ¶66). This suggests a theory of post-suit willfulness. The complaint also includes conclusory allegations that Defendant made "no attempt to design around the claims" (e.g., Compl. ¶31, ¶43, ¶55, ¶67).

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

• A core issue will be one of technical operation: Does the accused products' Wi-Fi chipset and firmware actually implement the specific dual-mode switching capability claimed in the ’313 patent, or does it merely offer a single, flexible mode? Likewise, does its direct-connection functionality operate by "simulating a network access point" in the specific manner recited by the ’869 patent, or does it use a different, non-infringing ad-hoc protocol?
• A second central issue will be one of claim construction: Can the term "simulating a network access point" (’869 patent) be construed broadly to cover modern Wi-Fi Direct or soft-AP modes, or is it limited by the specification to a narrower technical meaning? The outcome of the case may turn on whether the court defines these terms functionally or limits them to the specific embodiments described in the patents.