DCT

2:26-cv-00694

Kortek Industries Pty Ltd v. Schneider Electric USA Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:26-cv-00694, E.D. Tex., 08/14/2026
  • Venue Allegations: Venue is based on Defendant *Kortek Industries PTY Ltd v. Schneider Electric USA Inc* having a regular and established place of business within the Eastern District of Texas, specifically a distribution center located in Athens, Texas.
  • Core Dispute: Plaintiff alleges that Defendant's WiFi-enabled smart home products, including smart switches, dimmers, receptacles, and electric vehicle chargers, infringe seven U.S. patents related to wireless power and automation control systems.
  • Technical Context: The technology concerns the wireless control of electrical devices, a foundational element of the Internet of Things (IoT) and the smart home market, enabling communication and control via personal devices like smartphones.
  • Key Procedural History: The complaint alleges that the parties engaged in communications in 2016 and 2018 regarding Kortek's patented technology with the intent of establishing a licensing or business relationship. These discussions were allegedly terminated by Schneider, which forms the basis of the willful infringement allegations.

Case Timeline

Date Event
2011-02-16 Earliest Priority Date for '377, '869 Patents
2011-11-07 Earliest Priority Date for '427, '313, '535 Patents
2012-05-01 Earliest Priority Date for '234, '459 Patents
2016-01-01 Kortek-Schneider communications commence (approximate)
2016-04-19 U.S. Patent 9,319,234 Issued
2016-10-11 U.S. Patent 9,465,377 Issued
2017-03-07 U.S. Patent 9,590,427 Issued
2017-03-07 U.S. Patent 9,589,459 Issued
2018-01-01 Kortek-Schneider communications with CTO (approximate)
2019-10-01 U.S. Patent 10,429,869 Issued
2020-12-08 U.S. Patent 10,862,313 Issued
2023-02-07 U.S. Patent 11,574,535 Issued
2026-08-14 Complaint Filed

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

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

  • Patent Identification: U.S. Patent No. 9465377, "Wireless power, light and automation control," issued October 11, 2016.

The Invention Explained

  • Problem Addressed: The patent addresses the limitations of conventional power and automation control systems, which required dedicated wiring and proprietary controllers, making them expensive, difficult to reconfigure, and prone to technological obsolescence Compl. ¶28
  • The Patented Solution: The invention is a power control device that can be controlled by a personal device (e.g., a smartphone) using a direct, two-way, peer-to-peer wireless communications link, thereby eliminating the need for a central network hub or access point '377 Patent, abstract The device's microprocessor is configured to establish this peer-to-peer link by either "simulating a Wi-Fi access point" to connect with older "legacy" Wi-Fi devices or by negotiating a "group owner" role with newer Wi-Fi Direct-capable devices '377 Patent, col. 3:24-34 '377 Patent, col. 6:39-48
  • Technical Importance: This approach provided a flexible and adaptable method for smart device control at a time when direct device-to-device Wi-Fi (Wi-Fi Direct) was an emerging standard, offering a path to control devices without reliance on a home's central Wi-Fi router Compl. ¶29

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 Compl. ¶53
  • Essential elements of independent claim 1 include:
    • A power control device for controlling an electrical apparatus through a peer-to-peer link with a controller.
    • A microprocessor having a memory.
    • A power control circuit configured to vary the supply of electricity to the electrical apparatus.
    • A wireless communications transceiver for two-way, peer-to-peer communication.
    • The microprocessor is configured to open the peer-to-peer link by either:
      • simulating a Wi-Fi access point if the controller is a legacy Wi-Fi device; or
      • negotiating with the controller as to which will assume a group owner role if the controller is a Wi-Fi Direct device.
  • The complaint reserves the right to assert additional claims Compl. ¶43

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

  • Patent Identification: U.S. Patent No. 9590427, "Adaptable wireless power, light and automation system," issued March 7, 2017.

The Invention Explained

  • Problem Addressed: The patent identifies the distinct limitations of the two primary wireless control paradigms: infrastructure-based networks (like Wi-Fi WLAN) require a central access point that is a single point of failure, while direct peer-to-peer links (like Wi-Fi Direct) lack the ability to be controlled remotely over the internet '313 Patent, col. 2:1-38
  • The Patented Solution: The invention is an adaptable power control device with a wireless control module that can operate in two different modes. In a first mode, it uses a peer-to-peer standard (e.g., Wi-Fi Direct) for direct local control. Upon receiving an instruction from a personal controller, it can change to a second, non-peer-to-peer mode (e.g., as a Wi-Fi WLAN client) to communicate with a network access point, enabling remote control over the internet '427 Patent, abstract '427 Patent, col. 3:55-63 This dual-mode capability is illustrated in process flows showing the device initializing in one mode and then changing to another (e.g.,'313 Patent, Figs. 8-9).
  • Technical Importance: This solution offers a "best of both worlds" approach, providing the security and simplicity of direct peer-to-peer setup and control, combined with the flexibility of integrating into a home WLAN for remote access and broader automation Compl. ¶33

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 Compl. ¶65
  • Essential elements of independent claim 1 include:
    • A power control device for controlling a light.
    • A power control circuit.
    • A wireless control module including a radio transceiver and a microcontroller.
    • The microcontroller is configured in a first mode to operate using a peer-to-peer communications standard.
    • The microcontroller is configured in a second mode to operate using a non-peer-to-peer communications standard to communicate with a network access point in a WLAN.
    • The microcontroller is configured to change from the first mode to the second mode upon receiving instructions from the personal controller.
  • The complaint reserves the right to assert additional claims Compl. ¶55

Multi-Patent Capsules

  • Multi-Patent Capsule: U.S. Patent No. 10,862,313

    • Patent Identification: U.S. Patent No. 10862313, "Adaptable wireless power, light and automation system," issued December 8, 2020 Compl. ¶20
    • Technology Synopsis: This patent describes an adaptable power control system that can switch between a peer-to-peer communication mode for direct local control and a non-peer-to-peer (WLAN) mode for network-based control. The invention aims to provide flexibility by allowing a device to operate in either a standalone capacity or as part of a broader, internet-connected smart home system '313 Patent, abstract '313 Patent, col. 1:50-col. 2:44
    • Asserted Claims: At least one claim, including exemplary claim 1 Compl. ¶67 Compl. ¶77
    • Accused Features: The X Series smart switches, dimmers, and receptacles are accused of infringing this patent Compl. ¶32 Compl. ¶77

  • Multi-Patent Capsule: U.S. Patent No. 10,429,869

    • Patent Identification: U.S. Patent No. 10429869, "Wireless power, light and automation control," issued October 1, 2019 Compl. ¶21
    • Technology Synopsis: This patent details a method and device for wirelessly controlling power to an electrical apparatus. The core of the invention is the use of a peer-to-peer wireless link (such as Wi-Fi Direct) between a controller (e.g., a smartphone) and the power control unit, where the power control unit is configured to always send a discovery message to initiate the connection '869 Patent, abstract '869 Patent, claim 1
    • Asserted Claims: At least one claim, including exemplary claim 1 Compl. ¶79 Compl. ¶89
    • Accused Features: Schneider's WiFi-enabled EV charging products are accused of infringing this patent Compl. ¶32 Compl. ¶89

  • Multi-Patent Capsule: U.S. Patent No. 9,319,234

    • Patent Identification: U.S. Patent No. 9319234, "Modular wireless power, light and automation control," issued April 19, 2016 Compl. ¶22
    • Technology Synopsis: This patent describes a modular wireless control device designed to be interchangeable and adaptable. It can function as either a peer-to-peer access point/group participant for direct control or as a network client on a standard Wi-Fi WLAN, providing flexibility in how the device is integrated and controlled '234 Patent, abstract '234 Patent, col. 4:26-44
    • Asserted Claims: At least one claim, including exemplary claim 10 Compl. ¶91 Compl. ¶101
    • Accused Features: Schneider's WiFi-enabled EV charging products are accused of infringing this patent Compl. ¶32 Compl. ¶101

  • Multi-Patent Capsule: U.S. Patent No. 9,589,459

    • Patent Identification: U.S. Patent No. 9589459, "Modular wireless power, light and automation control," issued March 7, 2017 Compl. ¶23
    • Technology Synopsis: This patent claims a method for controlling an electrical apparatus by initiating a two-way, peer-to-peer wireless link and then providing an instruction to either maintain that peer-to-peer link or change to a non-peer-to-peer link. This covers the process of setting up and configuring a device to operate in one of two distinct network modes '459 Patent, claim 1
    • Asserted Claims: At least one claim, including exemplary claim 1 Compl. ¶103 Compl. ¶115
    • Accused Features: The complaint alleges Schneider performs the steps of the claimed method during activities like product development, testing, and customer demonstrations of its EV charging products Compl. ¶103

  • Multi-Patent Capsule: U.S. Patent No. 11,574,535

    • Patent Identification: U.S. Patent No. 11574535, "Adaptable wireless power, light and automation system for household appliances," issued February 7, 2023 Compl. ¶24
    • Technology Synopsis: This patent is directed at an adaptable power control system specifically for a "household appliance." It describes a system that can switch between peer-to-peer and non-peer-to-peer communication modes. A key feature is the dynamic adjustment of the appliance's operation based on household energy use, a function relevant to load management in home energy systems '535 Patent, abstract Compl. ¶117
    • Asserted Claims: At least one claim, including exemplary claim 1 Compl. ¶118 Compl. ¶128
    • Accused Features: The Schneider Charge residential EV charger is specifically accused of infringing this patent, with the complaint highlighting its "SmartAmp load management" feature that "dynamically adjusts charging speed according to household energy use" Compl. ¶117

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are Schneider's WiFi-enabled devices, including its X Series line of smart switches, dimmers, and receptacles, and its Schneider Charge family of app-controlled electric vehicle charging stations Compl. ¶31
  • Functionality and Market Context: The accused products are smart home and energy management devices that are controlled and monitored through the "Schneider Home app" Compl. ¶31 The complaint alleges the X Series products are "WiFi- and Matter-enabled" Compl. ¶31 The Schneider Charge EV chargers are marketed as "Intelligent home level 2 EV Charger[s] with built-in load management" Compl. ¶117 A specific feature alleged for the EV chargers is "SmartAmp load management," which "dynamically adjusts charging speed according to household energy use" Compl. ¶117 The complaint suggests these products are significant in the market, quoting marketing language that describes Schneider as "the home electrification leader millions of homes trust" Compl. ¶117

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits for its infringement allegations but does not include them in the filing Compl. ¶¶53, 65, 77, 89, 101, 115, 128 Therefore, the infringement allegations for the lead patents are summarized below in prose.

Summary of U.S. Patent No. 9,465,377 Infringement Allegations

The complaint alleges that Schneider's Accused Products, including the EV chargers, directly and indirectly infringe at least claim 1 of the '377 patent Compl. ¶43 Compl. ¶53 The infringement theory is that these products practice the claimed system for peer-to-peer wireless control. According to the complaint, the products contain the claimed microprocessor, power control circuit, and wireless transceiver, and are configured to establish a peer-to-peer link with a controller like a smartphone by either simulating a Wi-Fi access point or negotiating a group owner role, as required by the claim Compl. ¶53

Summary of U.S. Patent No. 9,590,427 Infringement Allegations

The complaint alleges that Schneider's Accused Products directly and indirectly infringe at least claim 1 of the '427 patent Compl. ¶55 Compl. ¶65 The infringement theory centers on the products' adaptable, dual-mode communication capability. The complaint asserts that the products contain the claimed wireless control module configured to operate in a first peer-to-peer mode and a second non-peer-to-peer (WLAN) mode, and that the device is configured to change from the first mode to the second upon receiving instructions from a personal controller (the user's smartphone app), thereby meeting the limitations of the claim Compl. ¶65

  • Identified Points of Contention:
    • Scope Questions: A primary question for the '377 patent will be whether the initial setup and provisioning process of the accused "WiFi- and Matter-enabled" products constitutes "simulating a Wi-Fi access point" as the patent construes that term. For the '427 patent, a key question will be whether the device's ability to operate on a home WLAN after initial setup is a result of an explicit "instruction from the personal controller" to "change" modes, or if it is an automatic function of modern device provisioning protocols that falls outside the claim's scope.
    • Technical Questions: An evidentiary question will be what technical proof exists that the accused products actually perform the claimed functions. For the '427 patent, this raises the question of whether the products' firmware and the Schneider Home app implement a discrete, command-driven switch from a peer-to-peer communication mode to a WLAN client mode, or if the device merely supports both modes concurrently and connects to whichever is available.

V. Key Claim Terms for Construction

  • For the '377 Patent:

    • The Term: "simulating a Wi-Fi access point"
    • Context and Importance: This term is central to the infringement allegation for the '377 patent, as it describes a specific mechanism by which the claimed device achieves a peer-to-peer connection with a "legacy" Wi-Fi controller. Practitioners may focus on this term because its interpretation will determine whether modern device provisioning methods, potentially used by the accused products, fall within the scope of the claim.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent specification defines "simulating an access point" as a role "in which a discovery message is sent in order to initiate contact with another device" '377 Patent, col. 3:30-33 This could support an argument that any device broadcasting a network identifier for direct connection purposes is "simulating" an access point.
      • Evidence for a Narrower Interpretation: The specification provides the context of enabling communication with "legacy Wi-Fi devices that support the IEEE 802.11 specification" but not necessarily Wi-Fi Direct '377 Patent, col. 6:42-48 This could support a narrower construction limited to a specific "soft AP" mode for backward compatibility, potentially excluding newer protocols like Matter or Wi-Fi Easy Connect.

  • For the '427 Patent:

    • The Term: "configured to change from the first mode to the second mode upon receiving instructions from the personal controller"
    • Context and Importance: This term requires a specific cause-and-effect relationship: an instruction from the controller must cause the mode change. The infringement case hinges on proving that the user's interaction with the Schneider Home app sends such an instruction. Practitioners may focus on this term to dispute whether the accused product's mode-switching is a user-commanded function or an automatic, underlying network process.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent states that an "applications program" can implement the command to change modes '427 Patent, claim 8, which could support an argument that any user action within the app leading to a mode change qualifies as an "instruction."
      • Evidence for a Narrower Interpretation: The specification of a related patent in the same family shows a flowchart where the system microcontroller "commands Wireless Control Module 1 to disconnect the Wi-Fi Direct communications link and enter 'sleep' mode" after a WLAN connection becomes active '313 Patent, Fig. 9, step 708 This may support a narrower construction requiring a specific, discrete command to disable one mode and enable another, rather than merely having concurrent capabilities.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Schneider induces infringement by providing 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 Compl. ¶44 Compl. ¶56 Contributory infringement is alleged on the basis that Schneider supplies a material part of the claimed invention that is not a staple article of commerce and is especially adapted for infringement Compl. ¶44 Compl. ¶56
  • Willful Infringement: Willfulness allegations are based on pre-suit knowledge stemming from communications in 2016 and 2018, where Kortek allegedly disclosed its patented technology to Schneider executives for purposes of a potential business relationship Compl. ¶¶37-39 The complaint further alleges that Schneider became willfully blind by terminating these communications to avoid learning of Kortek's patent rights Compl. ¶40 Willfulness is also alleged based on knowledge acquired no later than the filing and service of the complaint Compl. ¶41

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

  • Technical Equivalence and Claim Scope: A central issue will be one of technical and definitional scope: can claim terms drafted in the context of early Wi-Fi Direct and soft-AP technologies, such as "simulating a Wi-Fi access point" and receiving "instructions...to change" modes, be construed to cover the device provisioning and network-joining protocols used in modern, Matter-enabled IoT ecosystems? The court's interpretation of these terms will likely determine whether the accused products' operations are functionally equivalent to the claimed inventions or represent a non-infringing technological evolution.
  • Willfulness and Pre-Suit Conduct: A key factual dispute will concern willfulness, centering on the 2016 and 2018 pre-suit communications between Kortek and Schneider. The case may turn on whether the evidence shows these discussions were specific enough to put Schneider on notice of the particular patents-in-suit and their alleged infringement, thereby supporting a finding of deliberate or reckless conduct required for enhanced damages.
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