DCT

3:17-cv-00723

Ademco Inc v. Research Products Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:17-cv-00723, W.D. Wis., 09/21/2017
  • Venue Allegations: Venue is alleged to be proper as Defendant is a Wisconsin corporation with its principal place of business in Madison, Wisconsin, and has allegedly committed acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s zoned heating, ventilation, and air conditioning (HVAC) control products, including zone panels and dampers, infringe seven U.S. patents related to HVAC controller hardware design, testing functionalities, and user interfaces.
  • Technical Context: Zoned HVAC systems enhance energy efficiency and occupant comfort by allowing independent temperature control of different areas within a single building.
  • Key Procedural History: The complaint notes that Plaintiff complied with 35 U.S.C. § 287 by placing notices of the patents-in-suit on its own commercial products, a fact relevant to the potential calculation of damages. No other significant procedural events are mentioned.

Case Timeline

Date Event
2006-11-30 Earliest Priority Date for ’091 and ’180 Patents
2006-12-29 Earliest Priority Date for ’839 and ’158 Patents
2007-04-24 Priority Date for D'325 Patent
c. 2007 Honeywell launches newly-designed zone panels
2008-03-04 D'325 Patent Issues
2010-01-12 ’158 Patent Issues
2011-03-22 ’180 Patent Issues
2011-06-07 ’839 Patent Issues
2012-06-14 Priority Date for ’409 and ’980 Patents
c. 2014 Honeywell launches newly-designed zone dampers
c. 2015 Defendant Aprilaire launches Accused Products
2016-04-12 ’091 Patent Issues
2017-05-30 ’409 Patent Issues
2017-08-15 ’980 Patent Issues
2017-09-21 Complaint Filed

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

U.S. Patent No. 7,957,839 - "HVAC Zone Controller"

  • Issued: June 7, 2011 (the “’839 Patent”)

The Invention Explained

  • Problem Addressed: The complaint highlights the complexity involved in installing, configuring, and maintaining zoned HVAC systems (Compl. ¶14). The patent’s background section elaborates on this, noting the need for improved zone controllers that can manage signals from multiple thermostats and control various HVAC components and dampers (’839 Patent, col. 1:10-44).
  • The Patented Solution: The invention is a zone controller with a specific physical architecture designed to simplify user interaction. It organizes electronic components into three distinct groups based on function: core components not accessed by users, components for installer access, and components for operator (e.g., homeowner) access (’839 Patent, Abstract). The controller uses a system of a permanent first cover and a selectively removable second cover to physically partition these component groups, exposing only what is necessary for a given user's task (’839 Patent, col. 2:45-67).
  • Technical Importance: This design approach seeks to reduce installation errors and simplify operation by creating physically distinct interfaces tailored to different types of users (installers versus end-users). (Compl. ¶14, ¶16).

Key Claims at a Glance

  • The complaint asserts claims 1-21, with claim 1 being independent (Compl. ¶33).
  • The essential elements of independent claim 1 include:
    • An HVAC zoning control panel comprising an electronics board.
    • Electronic components mounted to the board, characterized by three groupings: a first grouping not accessed for installation or operation, a second grouping accessed for installation, and a third grouping accessed for operation.
    • A first board cover that prevents access to the first grouping.
    • A second board cover that selectively prevents access to the second grouping but not the third.
  • The complaint asserts dependent claims.

U.S. Patent No. 7,645,158 - "Terminal Block and Test Pad for an HVAC Controller"

  • Issued: January 12, 2010 (the “’158 Patent”)

The Invention Explained

  • Problem Addressed: The patent’s background section notes that while modern "quick-connect or screwless terminal blocks" have advantages over traditional screw-type terminals, they lack an easily accessible site for electrical testing, as the screw head on older terminals provided a convenient probe point (’158 Patent, col. 1:42-50).
  • The Patented Solution: The invention provides a dedicated "test pad" on the printed circuit board, positioned adjacent to and electrically connected with its corresponding screwless terminal block (’158 Patent, Abstract; Fig. 2). This creates an explicit, accessible location for an installer to use a multimeter or other testing probe to verify electrical connections, without disturbing the wire itself. The patent also discloses that the test pad may include a recessed portion to help hold a probe in place (’158 Patent, Abstract; col. 6:4-14).
  • Technical Importance: The invention combines the installation speed of modern screwless terminals with the diagnostic convenience of older screw-type terminals, aiming to simplify the installation and troubleshooting process for HVAC technicians. (Compl. ¶14).

Key Claims at a Glance

  • The complaint asserts claims 1-12 and 14-19, with claims 1 and 9 being independent (Compl. ¶37). The infringement allegations focus on claim 1 (Compl. ¶38).
  • The essential elements of independent claim 1 include:
    • An HVAC controller with a housing mountable to a wall.
    • A printed circuit board configured to control HVAC components.
    • A terminal block on the board for receiving a wire.
    • A test pad that is part of the printed circuit board, located adjacent to but spaced from the terminal block, and electrically connected to it.
    • A housing configured to enclose parts of the board while exposing the terminal block and the test pad for "ready access by a user."
  • The complaint asserts dependent claims.

U.S. Patent No. 9,664,409 - "HVAC Damper System"

  • Issued: May 30, 2017 (the “’409 patent”) (Compl. ¶22).
  • Technology Synopsis: The patent relates to a damper system for an HVAC duct, such as a bypass damper. The system includes a damper blade and a shaft connected to an actuator or force adjustment mechanism that biases the blade toward a closed position, allowing it to open in response to a specific air pressure level (Compl. ¶41-42).
  • Asserted Claims: Claims 1-2, 4-6, and 10-16 (Compl. ¶41).
  • Accused Features: Defendant’s Aprilaire Zoned Comfort Control™ barometric bypass dampers (Compl. ¶41).

U.S. Patent No. 9,732,980 - "HVAC Actuator with Range Adjustment"

  • Issued: August 15, 2017 (the “’980 patent”) (Compl. ¶24).
  • Technology Synopsis: The patent describes an HVAC actuator with a user-manipulable range adjustment lever. This feature allows an installer to selectively limit the actuator's full range of rotation to one of several pre-determined reduced ranges, thereby setting custom open or closed positions for a connected damper (Compl. ¶45-46).
  • Asserted Claims: Claims 14 and 16-19 (Compl. ¶45).
  • Accused Features: Defendant’s Aprilaire Zoned Comfort Control™ round zone dampers, rectangular zone dampers, and ventilation dampers (Compl. ¶45).

U.S. Patent No. 9,310,091 - "HVAC Controller with Checkout Utility"

  • Issued: April 12, 2016 (the “’091 patent”) (Compl. ¶26).
  • Technology Synopsis: The patent covers an HVAC controller featuring a "checkout utility" or mode. This mode presents the installer with a simplified, sequential menu to test the functionality of connected components, such as heaters, coolers, and individual zone dampers, to confirm correct installation and operation (Compl. ¶49-50).
  • Asserted Claims: Claims 1-12 (Compl. ¶49).
  • Accused Features: Defendant’s Aprilaire Zoned Comfort Control™ zone panels (Compl. ¶49).

U.S. Patent No. 7,913,180 - "HVAC Zone Control Panel with Mode Navigation"

  • Issued: March 22, 2011 (the “’180 patent”) (Compl. ¶28).
  • Technology Synopsis: The patent relates to a user interface for an HVAC zone control panel that employs a simplified menu structure. It allows a user to navigate through configuration and checkout screens sequentially using dedicated forward and back buttons, avoiding complex hierarchical sub-menus to create a more intuitive user experience (Compl. ¶53-54).
  • Asserted Claims: Claims 1, 3, and 4 (Compl. ¶53).
  • Accused Features: Defendant’s Aprilaire Zoned Comfort Control™ zone panels (Compl. ¶53).

U.S. Patent No. D563,325 - "HVAC Control Device"

  • Issued: March 4, 2008 (the “’325 patent”) (Compl. ¶30).
  • Technology Synopsis: This is a design patent that protects the ornamental, non-functional appearance of an HVAC control device. The complaint alleges it protects the design of Honeywell's TrueZone® HZ432 Panel (Compl. ¶16).
  • Asserted Claims: The single claim for the ornamental design as shown in the patent figures (Compl. ¶57-59).
  • Accused Features: The ornamental design of Defendant’s Aprilaire Zoned Comfort Control™ zone panels (Compl. ¶57).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Defendant’s “Aprilaire Zoned Comfort Control™” line of products, which includes zone panels (e.g., models 6202, 6404), round and rectangular zone dampers, ventilation dampers, and barometric bypass dampers (Compl. ¶2).

Functionality and Market Context

  • The accused products constitute a zoned HVAC system designed to regulate airflow and temperature across different zones in a building (Compl. ¶13). The complaint alleges that Defendant, starting around 2015, "substantially redesigned its previously-offered zoning products by adding many of the patented features from Honeywell’s TrueZONE® products" (Compl. ¶16). It further alleges that Defendant markets these products by highlighting benefits such as "fast and easy installation, wiring, and set up," which Plaintiff contends are achieved by practicing its patented technology (Compl. ¶16).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim-chart exhibits that are not provided; therefore, the infringement theories are summarized below in prose.

  • ’839 Patent Infringement Allegations: The complaint alleges that Defendant's accused zone panels directly infringe claims of the ’839 Patent (Compl. ¶33). The narrative infringement theory suggests the accused panels embody the claimed invention by physically organizing their internal electronic components into the three distinct functional groupings required by claim 1: (1) core electronics inaccessible to all users, (2) installer-specific components, and (3) operator-accessible components (Compl. ¶34). The theory further alleges that the panels utilize a system of fixed and removable covers that prevents access to the first group, selectively prevents access to the second, and allows access to the third, thereby mapping onto the claimed structural elements.

  • ’158 Patent Infringement Allegations: The complaint alleges the accused zone panels directly infringe claims of the ’158 Patent (Compl. ¶37). The infringement theory suggests the accused panels incorporate "quick-connect or screwless" terminal blocks for wiring and, critically, also include separate, adjacent conductive pads on the circuit board that are electrically connected to these terminals (Compl. ¶38). These pads are alleged to function as the claimed "test pad," providing a dedicated point for installers to probe and verify electrical signals. The theory also contends that the product's housing is designed to leave both the terminal blocks and these test pads exposed for access.

  • Identified Points of Contention:

    • Scope Questions: For the ’839 Patent, a central issue may be the construction of the term "grouping." The analysis will question whether the accused panel's components are physically and functionally segregated in the specific manner required by the claim. For the ’158 Patent, the definition of "test pad" will be critical. The analysis raises the question of whether any exposed, electrically connected conductive point on a circuit board meets this limitation, or if the term requires a feature specifically designed and designated for testing.
    • Technical Questions: For the ’839 Patent, what evidence does the complaint provide that the accused product's covers perform the specific dual function of selectively preventing access to one component group while not preventing access to another? For the ’158 Patent, the analysis questions what technical evidence shows the accused conductive areas were designed as intentional "test pads" rather than being incidental exposed portions of a circuit trace.

V. Key Claim Terms for Construction

Term 1: ’839 Patent, claim 1

  • The Term: "a second board cover that selectively prevents access to the second grouping of electronic components but not the third grouping of electronic components"
  • Context and Importance: Practitioners may focus on this term because the infringement determination for the ’839 Patent depends on whether the accused product's physical housing has a cover that performs this specific, dual-functionality of shielding installer-level components while simultaneously leaving operator-level components exposed.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself does not specify the form, material, or attachment mechanism of the "cover," which could support a construction encompassing any structure that achieves the claimed selective prevention of access (’839 Patent, col. 8:51-55).
    • Evidence for a Narrower Interpretation: The abstract describes a "second cover... that selectively covers and prevents access to the second grouping," linking the structure directly to its function for a specific user type. A party might argue this context implies a discrete component intended for this purpose, not just an arbitrary section of the main housing (’839 Patent, Abstract).

Term 2: ’158 Patent, claim 1

  • The Term: "a test pad part of the printed circuit board"
  • Context and Importance: Practitioners may focus on this term because the case may turn on whether an exposed conductive area on the accused device's circuit board constitutes a "test pad" within the meaning of the patent. The patent's purpose was to remedy the lack of a testing site on modern terminals.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: Claim 1 requires only that the test pad be "part of the printed circuit board," "spaced from but located adjacent to the terminal block," and "electrically connected" to it, suggesting a broad structural definition (’158 Patent, col. 8:13-19).
    • Evidence for a Narrower Interpretation: The specification describes the test pad as an area an "installer, or technician may probe to test the electrical characteristics" and discloses an embodiment with a "recessed portion" to help hold a probe (’158 Patent, col. 5:48-52; col. 6:4-6). This could support a narrower construction requiring that the feature be designed or designated in a way that indicates its intended function as a testing point.

VI. Other Allegations

  • Indirect Infringement: The complaint does not provide sufficient detail for analysis of indirect infringement. The infringement counts focus on direct infringement under 35 U.S.C. § 271(a) (Compl. ¶33, 37).
  • Willful Infringement: The complaint does not provide sufficient detail for analysis of willful infringement. While the prayer for relief requests enhanced damages, the factual allegations in the body of the complaint do not establish pre-suit knowledge or other elements typically required to support such a claim.

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

  • A core issue will be one of structural interpretation: Does the physical construction of the accused zone panels—specifically their internal component layout and covering structures—meet the functional grouping and selective access limitations required by claim 1 of the ’839 patent, or is there a fundamental architectural difference?
  • A key evidentiary question will be one of intended purpose versus inherent capability: For the ’158 patent, does the accused feature constitute a "test pad" designed for the purpose of testing as taught by the patent, or is it an incidental conductive surface that can be used for testing but was not designed as such, raising a question of whether it truly reads on the claim?
  • A third central question, encompassing the software-related patents (’091, ’180), will be one of functional equivalence: Does the user interface logic and diagnostic workflow of the accused Aprilaire panels perform the specific steps of the claimed "checkout utility" and "mode navigation," or do they achieve a similar outcome through a technically distinct and non-infringing method?