Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 1 of 23
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`
`CAUSAM ENTERPRISES, INC.,
`Plaintiff,
`
` v.
`ITRON, INC.,
`Defendant.
`
`
`
`
`No. 6:21-cv-00750
`
`JURY TRIAL DEMANDED
`
`COMPLAINT FOR PATENT INFRINGEMENT
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`This is an action for patent infringement under the patent laws of the United States of
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`America, 35 U.S.C. § 100 et seq., in which Plaintiff Causam Enterprises, Inc. (“Plaintiff” or
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`“Causam”) makes the following allegations against Defendant Itron, Inc. (“Defendant” or
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`“Itron”):
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`INTRODUCTION
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`1.
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`A decade ago, utility companies and electric grid operators sought to improve the
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`reliability of electric power provided to their customers by initiating Demand Response programs
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`to reduce the demand of power consuming devices at customer homes on their grids, but they
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`faced technological challenges to measure and understand the electric operating reserves created
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`by these programs. Inventor and entrepreneur Joseph Forbes, Jr. correctly identified this problem
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`in the market, and set to work developing solutions. Through a combination of hard work, North
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`Carolinian grit, and a clear vision of the future of smart power management, Mr. Forbes invented
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`practical and system-based solutions and methods for Demand Response and smart electric
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`management. The United States Patent & Trademark Office awarded Mr. Forbes with more than
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`a hundred patents, including the four patents asserted in this case.
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`Complaint - Page 1
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 2 of 23
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`2.
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`Mr. Forbes and the company he founded, Causam Enterprises, Inc., pioneered an
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`unconventional power management architecture capable of actively managing, measuring, and
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`verifying reductions of power on a per-customer basis. Causam’s patented methods are ground-
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`breaking, because they enable grid operators to measure the amount of power consumed by
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`individual power-consuming devices in customers’ homes, and the power saved by reducing the
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`demand of those devices. These claims covering systems and methods improve the reliability of
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`electric service, reduce the strain on the electric system during peak demand times, eliminate
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`harmful carbon emissions, and save customers money, among other tangible benefits. As a result
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`of the success of Causam’s patents in providing reliable, cheaper energy, market entrants sprung
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`forth to capitalize on these new discoveries through unauthorized use of Causam’s patented
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`technology.
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`3.
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`Causam’s patented technology asserted in this case includes U.S. Patent Nos.
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`9,678,522 (“’522 Patent”); 10,394,268 (“’268 Patent”); 10,396,592 (“’592 Patent”); and
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`8,805,552 (“’552 Patent”) (collectively, the “Asserted Patents,” true and correct copies of which
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`are attached hereto as Exhibits 1 through 4, respectively).
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`4.
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`Defendant Itron, a Washington corporation, is one such company unfairly
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`profiting from Causam’s patented technology. As described below, several of Itron’s products
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`utilize Causam’s patented systems and methods without license or permission.
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`5.
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`To protect its hard-earned intellectual property rights from unlawful interference,
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`Causam brings this action for patent infringement against Itron.
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`NATURE OF THE ACTION
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`6.
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`This Complaint arises under 35 U.S.C. § 271 for Defendant’s unlawful
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`infringement of the ’522 Patent, the ’268 Patent, the ’592 Patent, and the ’552 Patent. Causam
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`owns all right, title, and interest in each of the Asserted Patents.
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`Complaint - Page 2
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 3 of 23
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`THE PARTIES
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`7.
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`Causam is a Delaware corporation having its principal place of business at 8480
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`Honeycutt Road, Suite 200 Raleigh, NC 27615.
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`8.
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`Causam was first incorporated on October 10, 2013 under the name Causam
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`Energy, Inc. On January 18, 2018, Causam Energy, Inc. was renamed Causam Enterprises, Inc.
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`(the entity referred to herein as “Causam”).
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`9.
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`Causam is also the owner of all right, title, and interest in and to the Asserted
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`Patents.
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`10.
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`On information and belief, Defendant Itron, Inc. is a Washington corporation with
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`principal place of business at 2111 N. Molter Road, Liberty Lake, Washington, 99019.
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`JURISDICTION AND VENUE
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`11.
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`This is an action for patent infringement arising under the patent laws of the United
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`States, 35 U.S.C. § 271. This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and
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`1338(a).
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`12.
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`On information and belief, Defendant has committed acts within this District giving
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`rise to this action and has established minimum contacts with this forum such that the exercise of
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`jurisdiction over Defendant would not offend traditional notions of fair play and substantial justice.
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`Personal jurisdiction also exists specifically over Defendant, because, on information and belief,
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`Defendant directly and through subsidiaries or intermediaries, has committed and continues to
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`commit acts of infringement in this District, by, among other things, using, offering for sale,
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`selling, importing, advertising, making available and marketing products within the State of Texas
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`and within the Western District of Texas, that infringe the Asserted Patents, as described below.
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`13.
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`Venue is proper in this District under 28 U.S.C. § 1400(b). On information and
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`belief, Defendant maintains a regular and established place of business in this District at 1250 S.
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`Complaint - Page 3
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 4 of 23
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`Capital of Texas Highway, Bldg 3, Suite 200, Austin, TX, 78746, and has committed acts of
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`infringement in the Western District of Texas.
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`FACTUAL BACKGROUND
`CAUSAM’S PATENTED DEMAND RESPONSE TECHNOLOGY
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`14.
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`To ensure the uninterrupted operation of electric power grids, serving utilities are
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`required by regulatory authorities, such as the Federal Regulatory Energy Commission (“FERC”)
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`and the North American Electric Reliability Corporation (“NERC”), to maintain substantial
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`“backup” stores of electric power known as “operating reserves.” In periods of peak demand,
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`such as heat waves, the supply of power actively flowing across an electric grid is often
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`insufficient to satisfy that demand. In response, operating reserves are employed to generate
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`additional power supply and ensure that their customers do not suffer brownouts or blackouts,
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`like those suffered by so many Texans in February 2021.
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`15.
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`Because demand for power is highly elastic, but its supply necessarily finite,
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`techniques for efficiently allocating operating reserves emphasize reducing demand rather than
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`increasing supply. One such widely used technique is “demand response,” which operates by
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`incentivizing customers, through discounts on utility bills, to voluntarily reduce their
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`consumption of power during periods of peak demand. For example, on hot summer days,
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`customers who have signed up for a utility’s demand response program are able to raise the
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`temperature of their homes while they are away at work. In exchange, such customers receive
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`discounts proportional to the amount of power they have reduced, and thus the additional reserve
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`capacity they have generated. The aggregate reduction of demand achieved by such demand
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`response programs often eliminates the need to build additional, expensive, and environmentally
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`hazardous electricity generation capacity.
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`Complaint - Page 4
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 5 of 23
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`16.
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`At the time of the Asserted Patents, however, demand response programs had a
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`severe impediment: the “one-way” and incipient “two-way” load control systems deployed to
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`implement such programs were incapable of precisely measuring if, and if so by how much, any
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`individual customer had reduced his or her power consumption, and therefore prevented
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`determination of how much additional power supply individual customers had generated. This
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`imprecision made it difficult, if not impossible, to accurately estimate the operating reserves
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`remaining, and to adequately compensate customers for generating those reserves.
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`17.
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` “One-way” systems employed load control devices, such as RF-controlled relay
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`switches attached to a customer’s air conditioner, that were capable only of sending rather than
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`receiving. With no “return path” from the load control device back to the control center, and no
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`ability to analyze, measure, and verify the actual power consumed by customers, such one-way
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`architectures were “highly inefficient for measuring the actual load shed to the serving utility.”
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`See, e.g., Ex. 1 (’522 Patent) at 2:7-17, 1:46-52.
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`18.
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`Similarly, although the incipient “two-way” systems extant at the time of Asserted
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`Patents were able to transmit some data back to “host processors,” they disclosed no mechanism
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`to “track[] or accumulate[]” the “power saved” on a “per customer or per utility basis for future
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`use by the utility.” See, e.g., Ex. 1 (’522 Patent) at 3:20-28.
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`19.
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`Seeking to address the imprecision of prior demand response systems, Causam
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`pioneered an innovative power management architecture capable of actively managing,
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`measuring, and verifying reductions of power on a per-customer basis. As disclosed in the
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`Asserted Patents, Causam’s architecture employs a “load management server” to actively
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`monitor, control, and measure the power consumed by, “power consuming devices,” such as A/C
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`units and water heaters. Internet-enabled “two-way” load control devices, such as smart
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`thermostats, smart meters, and digital control units, take real-time measurements of the power
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`Complaint - Page 5
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 6 of 23
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`consumed by each monitored “power consuming device,” and send back those measurements to
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`the load management server for immediate aggregation and analysis. See, e.g., Ex. 1 (’522
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`Patent) at 7:8-29. “When the serving utility needs more power than it is currently able to supply,”
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`i.e., during a demand response event, Causam’s power management architecture is able to
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`“automatically adjust[] the power distribution by turning off specific loads on an individual
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`subscriber basis.” Id. Furthermore, “[b]ecause the amount of power consumed by each specific”
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`power-consuming device “is known,” Causam’s architecture “can determine precisely which
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`loads to turn off and track[] the power savings generated by each customer as a result of this
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`short-term outage.” Id.
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`20.
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`Finally, Causam’s novel power management architecture translates the power
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`savings generated by each customer into a “power supply value,” (“PSV”), which “may be
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`provided in units of electrical power flow, monetary equivalent, and combinations thereof,” Id. at
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`7:40-60. That PSV enables Causam’s architecture to precisely track how much additional power
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`supply customers have generated, and the operating reserves remaining.
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`21.
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`These unconventional features of the systems and methods of the Asserted Patents
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`are specifically tied to and reflected in the claims. For example, claim 1 of the ’522 Patent
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`describes the steps of “receiving a power control message from the load management server,”
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`that is “responsive to a power control request and indicating at least one of an amount of electric
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`power to be reduced, disabled, or enabled,” and includes an “identification of at least one
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`controllable device,” while also “generating a power supply value (PSV) corresponding to the
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`reduction in consumed power.” See Ex. 1 (’522 Patent) at claim 1; see also Ex. 4 (’552 Patent) at
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`claim 1. Similarly, claim 1 of the ’268 Patent further includes “generating measurement and
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`verification data corresponding to the reduction in consumed power.” See Ex. 2 (’268 Patent) at
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`claim 1. The ’592 Patent further claims that “the actual value of power reduced is a curtailment
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`Complaint - Page 6
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 7 of 23
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`value as supply equivalence and provides operating reserve for the electric power grid.” See Ex.
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`3 (’592 Patent) at claim 1. These system and method claims do not recite a general or abstract
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`idea but instead reflect Mr. Forbes’ unconventional, novel approach to demand response.
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`22.
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`Causam’s breakthrough demand response solutions have been offered through
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`channel partners such as utilities, energy retailers, broadband service providers, and HVAC
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`companies. For example, Causam’s licensee Landis + Gyr offers electric utility providers a
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`comprehensive array of smart grid solutions tailored to execute demand response strategies.
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`Landis + Gyr emphasizes the use of demand response programs to provide a strategic, real-time
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`operational resource for cost-effective and reliable peak power adjustments and overall load
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`management.1
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`ITRON’S INFRINGEMENT OF THE ASSERTED PATENTS
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`23.
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`The Itron Accused Products include all Itron smart thermostats and load control
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`switches having demand response functionality and/or compatible with Itron’s IntelliSOURCE
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`Enterprise and IntelliSOURCE Express software.
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`24.
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`Known Itron Accused Products include: the IntelliPEAK 700; the IntelliTEMP
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`DirectLink; the IntelliPEAK DirectLink; the Commercial Load Control Device; the Programmable
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`Communicating Thermostat; the Programmable Communicating Thermostat - Aprilaire Model
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`TBZ00-8521-A; the Water Heater and Pool Pump Switch with measurement and verification; and
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`the A/C Cycling Switch with measurement and verification.
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`25.
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`An example of an Itron Accused Product, the IntelliPEAK DirectLink, is shown
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`below.
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`1 See generally, https://www.landisgyr.com/challenge/demand-response/.
`Complaint - Page 7
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 8 of 23
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`Exhibit 5 (Itron, Load Control Product Information).
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`26.
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`Upon information and belief, the Itron Accused Products are specifically
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`designed, and especially made and adapted, to infringe claims of the Asserted Patents and to
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`embody a material part of the claimed inventions. The Itron Accused Products are imported into
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`the United States with this infringing design. The Itron Accused Products are then installed and
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`used in the United States in users’ homes according to Itron’s design and instructions.
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`27.
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`Upon information and belief, Itron actively encourages users to use the Itron
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`Accused Products in the normal and intended manner, and according to Itron’s design and
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`instructions, which infringes certain claims of the Asserted Patents. The Itron Accused Products
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`are not staple articles or commodities suitable for substantial non-infringing use. Thus, these acts
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`each constitute an unlawful and unfair act.
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`28.
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`Causam now brings this action for patent infringement to protect its intellectual
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`property rights.
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`Complaint - Page 8
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 9 of 23
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`COUNT I
`(Direct Infringement of U.S. Patent No. 9,678,522)
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`29.
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`Causam realleges and incorporates by reference the foregoing paragraphs, as if
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`fully set forth herein.
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`30.
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`Causam owns all rights, title, and interest in the ’522 Patent, entitled “Method and
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`Apparatus for Actively Managing Consumption of Electric Power Over an Electric Power grid,”
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`duly and legally issued by the PTO on June 13, 2017. See Ex. 1.
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`31.
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`The ’522 Patent is valid, enforceable, and was duly issued in full compliance with
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`Title 35 of the United States Code.
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`32.
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`33.
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`Itron has had notice of the ’522 Patent since at least the filing of this Complaint.
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`Itron has directly infringed the ’522 Patent—literally and/or through the doctrine
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`of equivalents—by making, using, selling, offering for sale in the United States, and/or
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`importing into the United States smart thermostats and components thereof that practice at least
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`claims 1-8, 10, and 13-23, 25-29 of the ’522 patent (“the ’522 Patent Asserted Claims”),
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`including but not limited to the Itron Accused Products. Through these actions, Itron directly
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`violates 35 U.S.C. § 271(a).
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`34.
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`Based on publicly available information, Itron makes, uses, offers for sale, sells,
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`and/or imports certain products, such as the IntelliPEAK 700; the IntelliTEMP DirectLink; the
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`IntelliPEAK DirectLink; the Commercial Load Control Device; the Programmable
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`Communicating Thermostat; the Programmable Communicating Thermostat - Aprilaire Model
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`TBZ00-8521-A; the Water Heater and Pool Pump Switch with measurement and verification;
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`and the A/C Cycling Switch with measurement and verification, that directly infringe, literally
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`and/or under the doctrine of equivalents, at least the Asserted Claims of the ’522 Patent.
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`35.
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`The Accused Products satisfy all limitations of at least the ’522 Patent Asserted
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`Claims. A claim chart comparing exemplary claim elements of one of the ’522 Patent Asserted
`Complaint - Page 9
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 10 of 23
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`Claims to the Accused Products is attached as Exhibit 6.
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`36.
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`Itron’s infringement has been, and continues to be, knowing, intentional and
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`willful.
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`37.
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`Itron’s acts of infringement of the ’522 Patent has directly and proximately caused
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`and will continue to cause Causam damages for which it is entitled to compensation pursuant to
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`35 U.S.C. § 284.
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`38.
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`Itron’s acts of infringement of the ’522 Patent have directly and proximately
`
`caused, and will continue to cause, Causam immediate and irreparable harm, for which Causam
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`has no adequate remedy at law, unless such infringing activities are enjoined by this Court
`
`pursuant to 35 U.S.C. § 283.
`
`COUNT II
`(Indirect Infringement of U.S. Patent No. 9,678,522)
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`39.
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`Causam realleges and incorporates by reference the foregoing paragraphs, as if
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`fully set forth herein.
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`40.
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`41.
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`Itron has had notice of the ’522 Patent since at least the filing of this Complaint.
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`Itron indirectly infringes the ’522 Patent in violation of 35 U.S.C. § 271(b) by
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`actively encouraging and inducing its customers and end users to use the Accused Products in
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`ways that directly infringe at least the Asserted Claims. Itron does so intentionally and knowing
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`that its customers will directly infringe the ’522 Patent Asserted Claims through the normal and
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`customary use of the Itron Accused Products.
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`42.
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`Itron’s affirmative acts of providing instructions, manuals, training, guides,
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`marketing materials, and demonstrations induces distributors and customers to use the Itron
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`Accused Products in a manner intended by Itron to cause infringement of the ’522 Patent.
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`43.
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`Itron performed the acts that constitute inducement with knowledge or at least
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`willful blindness that the induced acts would constitute infringement. At least through the filing
`Complaint - Page 10
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 11 of 23
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`of this Complaint, Itron has received actual notice that its distributors and customers directly
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`infringe the ’522 Patent Asserted Claims and that its own acts induce such infringement.
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`44.
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`Itron also indirectly infringes the ’522 Patent in violation of 35 U.S.C. § 271(c) by
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`knowingly and intentionally contributing to infringement of at least the Asserted Claims of the
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`’522 Patent by others, including Itron’s distributors and customers who purchase and use the
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`Itron Accused Products.
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`45.
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`Itron’s affirmative acts of selling infringing smart thermostats and providing those
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`products to distributors and customers contribute to the infringement of the ’522 Patent. The
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`Itron Accused Products are specially made or adapted for use in infringement of the ’522 Patent
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`and are not staple articles of commerce suitable for substantial noninfringing use.
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`46.
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`Itron contributed, and is contributing, to the infringement of others with
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`knowledge or at least willful blindness that the Itron Accused Products are specially made or
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`adapted for use in an infringement of the ’522 Patent and are not staple articles of commerce
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`suitable for substantial noninfringing use. Through the filing of this Complaint, Itron has
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`received actual notice that its acts constitute contributory infringement.
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`47.
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`The Accused Products satisfy all limitations of at least the ’522 Patent Asserted
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`Claims. A claim chart comparing exemplary claim elements of one of the ’522 Patent Asserted
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`Claims to the Accused Products is attached as Exhibit 6.
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`48.
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`At least as of the filing of the Complaint, Itron is on notice that its infringement
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`has been, and continues to be, knowing, intentional and willful.
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`49.
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`Itron’s acts of infringement of the ’522 Patent have directly and proximately
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`caused and will continue to cause Causam damages for which it is entitled to compensation
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`pursuant to 35 U.S.C. § 284.
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`Complaint - Page 11
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 12 of 23
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`50.
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`Itron’s acts of infringement of the ’522 Patent have directly and proximately
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`caused, and will continue to cause, Causam immediate and irreparable harm, for which Causam
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`has no adequate remedy at law, unless such infringing activities are enjoined by this Court
`
`pursuant to 35 U.S.C. § 283.
`
`COUNT III
`(Direct Infringement of U.S. Patent No. 10,394,268)
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`51.
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`Causam realleges and incorporates by reference the foregoing paragraphs, as if
`
`fully set forth herein.
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`52.
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`Causam owns all rights, title, and interest in the ’268 Patent, entitled “Method and
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`Apparatus for Actively Managing Consumption of Electric Power Over an Electric Power grid,”
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`duly and legally issued by the PTO on August 27, 2019. See Ex. 2.
`
`53.
`
`The ’268 Patent is valid, enforceable, and was duly issued in full compliance with
`
`Title 35 of the United States Code.
`
`Itron has directly infringed the ’268 Patent— literally and/or through the doctrine
`of equivalents — by making, using, selling, offering for sale in the United States, and/or importing
`
`Itron has had notice of the ’268 Patent since at least the filing of this Complaint.
`
`54.
`
`55.
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`into the United States smart thermostats and components thereof that practice at least claims 1-11,
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`and 13-19 of the ’268 Patent (“the ’268 Patent Asserted Claims”), including but not limited to the
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`Itron Accused Products. Through these actions, Itron directly violates 35 U.S.C. § 271(a).
`
`56.
`
`Based on publicly available information, Itron makes, uses, offers for sale, sells,
`
`and/or imports certain products, such as the IntelliPEAK 700; the IntelliTEMP DirectLink; the
`
`IntelliPEAK DirectLink;
`
`the Commercial Load Control Device;
`
`the Programmable
`
`Communicating Thermostat; the Programmable Communicating Thermostat - Aprilaire Model
`
`TBZ00-8521-A; the Water Heater and Pool Pump Switch with measurement and verification; and
`
`the A/C Cycling Switch with measurement and verification, that directly infringe, literally and/or
`Complaint - Page 12
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 13 of 23
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`under the doctrine of equivalents, the ’268 Patent Asserted Claims.
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`57.
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`The Itron Accused Products satisfy all limitations of the ’268 Patent Asserted
`
`Claims. A claim chart comparing exemplary claim elements of one of the ’268 Patent Asserted
`
`Claims to the Accused Products is attached as Exhibit 7.
`
`58.
`
`59.
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`Itron’s infringement has been, and continues to be, knowing, intentional and willful.
`
`Itron’s acts of infringement of the ’268 Patent have directly and proximately
`
`caused, and will continue to cause Causam damages for which it is entitled to compensation
`
`pursuant to 35 U.S.C. § 284.
`
`60.
`
`Itron’s acts of infringement of the ’268 Patent have directly and proximately
`
`caused, and will continue to cause, Causam immediate and irreparable harm, for which Causam
`
`has no adequate remedy at law, unless such infringing activities are enjoined by this Court pursuant
`
`to 35 U.S.C. § 283.
`
`COUNT IV
`(Indirect Infringement of U.S. Patent No. 10,394,268)
`
`61.
`
`Causam realleges and incorporates by reference the foregoing paragraphs, as if
`
`fully set forth herein.
`
`62.
`
`63.
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`Itron has had notice of the ’268 Patent since at least the filing of this Complaint.
`
`Itron indirectly infringes the ’268 Patent in violation of 35 U.S.C. § 271(b) by
`
`actively encouraging and inducing its customers and end users to use the Accused Products in
`
`ways that directly infringe at least the ’268 Patent Asserted Claims. Itron does so intentionally and
`
`knowing that its customers will directly infringe the Asserted claims of the ’268 Patent through
`
`the normal and customary use of the Itron Accused Products.
`
`64.
`
`Itron’s affirmative acts of providing instructions, manuals, training, guides,
`
`marketing materials, and demonstrations induces distributors and customers to use the Itron
`
`Accused Products in a manner intended by Itron to cause infringement of the ’268 Patent.
`Complaint - Page 13
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 14 of 23
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`65.
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`Itron performed the acts that constitute inducement with knowledge or at least
`
`willful blindness that the induced acts would constitute infringement. At least through the filing of
`
`this Complaint, Itron has received actual notice that its distributors and customers directly infringe
`
`the ’268 Patent and that its own acts induce such infringement.
`
`66.
`
`Itron also indirectly infringes the ’268 Patent in violation of 35 U.S.C. § 271(c) by
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`knowingly and intentionally contributing to infringement of at least the ’268 Patent Asserted
`
`Claims by others, including Itron’s distributors and customers who purchase and use the Itron
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`Accused Products.
`
`67.
`
`Itron’s affirmative acts of selling infringing smart thermostats and providing those
`
`products to distributors and customers contribute to the infringement of the ’268 Patent. The Itron
`
`Accused Products are specially made or adapted for use in infringement of the ’268 Patent and are
`
`not staple articles of commerce suitable for substantial noninfringing use.
`
`68.
`
`Itron contributed, and is contributing, to the infringement of others with knowledge
`
`or at least willful blindness that the Itron Accused Products are specially made or adapted for use
`
`in an infringement of the ’268 Patent and are not staple articles of commerce suitable for substantial
`
`noninfringing use. Through the filing of this Complaint, Itron has received actual notice that its
`
`acts constitute contributory infringement.
`
`69.
`
`The Itron Accused Products satisfy all limitations of the ’268 Patent Asserted
`
`Claims. A claim chart comparing exemplary claim elements of one of the ’268 Patent Asserted
`
`Claims to the Itron Accused Products is attached as Exhibit 7.
`
`70.
`
`At least as of the filing of the Complaint, Itron is on notice that its infringement has
`
`been, and continues to be, knowing, intentional and willful.
`
`71.
`
`Itron’s acts of infringement of the ’268 Patent have directly and proximately
`
`caused, and will continue to cause Causam damages for which it is entitled to compensation
`
`Complaint - Page 14
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 15 of 23
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`
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`pursuant to 35 U.S.C. § 284.
`
`72.
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`Itron’s acts of infringement of the ’268 Patent have directly and proximately
`
`caused, and will continue to cause, Causam immediate and irreparable harm, for which Causam
`
`has no adequate remedy at law, unless such infringing activities are enjoined by this Court pursuant
`
`to 35 U.S.C. § 283.
`
`COUNT V
`(Direct Infringement of U.S. Patent No. 10,396,592)
`
`73.
`
`Causam realleges and incorporates by reference the foregoing paragraphs, as if
`
`fully set forth herein.
`
`74.
`
`Causam owns all rights, title, and interest in U.S. Patent No. 10,396,592, titled
`
`“System and Method for Estimating and Providing Dispatchable Operating Reserve Energy
`
`Capacity Through Use of Active Load Management,” issued August 27, 2019. See Ex. 3.
`
`75.
`
`The ’592 Patent is valid, enforceable, and was duly issued in full compliance with
`
`Title 35 of the United States Code.
`
`76.
`
`77.
`
`Itron has had notice of the ’592 Patent since at least the filing of this Complaint.
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`Itron has directly infringed the ’592 Patent— literally and/or through the doctrine
`
`of equivalents — by making, using, selling, offering for sale in the United States, and/or
`
`importing into the United States smart thermostats and components thereof that practice at least
`
`claims 1-2, 5-6, 8-9, 11, 13-14 and 17 of the ’592 Patent (“the ’592 Patent Asserted Claims”),
`
`including but not limited to the accused products. Through these actions, Itron directly violates
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`35 U.S.C. § 271(a).
`
`78.
`
`Based on publicly available information, Itron makes, uses, offers for sale, sells,
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`and/or imports certain products, such as the IntelliPEAK 700; the IntelliTEMP DirectLink; the
`
`IntelliPEAK DirectLink; the Commercial Load Control Device; the Programmable
`
`Communicating Thermostat; the Programmable Communicating Thermostat - Aprilaire Model
`Complaint - Page 15
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 16 of 23
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`
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`TBZ00-8521-A; the Water Heater and Pool Pump Switch with measurement and verification;
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`and the A/C Cycling Switch with measurement and verification, literally and/or under the
`
`doctrine of equivalents, at least the ’592 Patent Asserted Claims.
`
`79.
`
`The Itron Accused Products satisfy all limitations of at least the ’592 Patent
`
`Asserted Claims. A claim chart comparing exemplary claim elements of one of the ’592 Patent
`
`Asserted Claims to the Itron Accused Products is attached as Exhibit 8.
`
`80.
`
`Itron’s infringement has been, and continues to be, knowing, intentional and
`
`willful.
`
`81.
`
`Itron’s acts of infringement of the ’592 Patent have directly and proximately
`
`caused and will continue to cause Causam damages for which it is entitled to compensation
`
`pursuant to 35 U.S.C. § 284.
`
`82.
`
`Itron’s acts of infringement of the ’592 Patent have directly and proximately
`
`caused, and will continue to cause, Causam immediate and irreparable harm, for which Causam
`
`has no adequate remedy at law, unless such infringing activities are enjoined by this Court
`
`pursuant to 35 U.S.C. § 283.
`
`COUNT VI
`(Indirect Infringement of U.S. Patent No. 10,396,592)
`
`83.
`
`Causam realleges and incorporates by reference the foregoing paragraphs, as if
`
`fully set forth herein.
`
`84.
`
`85.
`
`Itron has had notice of the ’592 Patent since at least the filing of this Complaint.
`
`Itron indirectly infringes the ’592 Patent in violation of 35 U.S.C. § 271(b) by
`
`actively encouraging and inducing its customers and end users to use the Itron Accused Products
`
`in ways that directly infringe the ’592 Patent Asserted Claims. Itron does so intentionally and
`
`knowing that its customers will directly infringe the Asserted Claims of the ’592 Patent through
`
`the normal and customary use of the Itron Accused Products.
`Complaint - Page 16
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`Case 6:21-cv-00750-ADA Document 1 Filed 07/22/21 Page 17 of 23
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`86.
`
`Itron’s affirmative acts of providing instructions, manuals, training, guides,
`
`marketing materials, and demonstrations induces distributors and customers to use the Accused
`
`Products in a manner intended by Itron to cause infringement of the ’592 Patent.
`
`87.
`
`Itron performed the acts that constitute inducement with knowledge or at least
`
`willful blindness that the induced acts would constitute infringement. At least through the filing
`
`of this Complaint, Itron has received actual notice that its distributors and customers directly
`
`infringe the Asserted Claims of the ’592 Patent and that its own acts induce such infringement.
`
`88.
`
`Itron indirectly infringes the ’592 Patent in violation of 35 U.S.C. § 271(c) by
`
`knowingly and intentionally contributing to infringement of at least the Asserted Claims of the
`
`’592 Patent by others, including Itron’s distributors and customers who purchase and use the
`
`accused products.
`
`89.
`
`Itron’s affirmative acts of selling infringing smart thermostats and providing those
`
`products to distributors and customers contribute to the infringement of the ’592 Patent. The
`
`Itron Accused Products are specially made or adapted for use in infringement of the ’592 Patent
`
`and are not staple articles of commerce suitable for substantial noninfringing use.
`
`90.
`
`Itron contributed, and is contributing, to the infr