Creator of 'Remotizer' Keyless Entry System Sues Apple for Selling HomeKit-Enabled August Smart Lock

[MacRumors]

Texas resident Mark Kilbourne has filed a lawsuit against Apple in Southern Texas for selling the HomeKit-enabled August Smart Lock.

The complaint claims that the August Smart Lock infringes upon his patented Remotizer keyless entry system for existing deadbolt locks. For selling the product, Apple is somehow being solely targeted here rather than August.

Kilbourne allegedly submitted a Remotizer app for iPhone for review around September 2014, but Apple said it was unable to continue with the process because it needed the associated hardware to fully assess the app.

"We began review of the app but are not able to continue because we need the associated hardware to fully assess your app features," read Apple's email response, according to the complaint. It appears Kilbourne never complied.

Both the Remotizer and August Smart Lock are electronic systems for remotely opening and closing a preexisting deadbolt lock without a key. Both products allow homeowners to keep their existing exterior door hardware and replace only the interior side of most standard deadbolts.

August's Smart Lock is compatible with Apple's HomeKit platform for locking and unlocking with Apple's Home app and Siri.

Kilbourne is seeking an award of unspecified damages and legal costs, and he wants Apple to stop selling the August Smart Lock, according to the complaint. The lawsuit is rather humorous given that it should probably be targeted at August Smart Lock, so we'll see how far this one goes before getting tossed out.

Article Link: Creator of 'Remotizer' Keyless Entry System Sues Apple for Selling HomeKit-Enabled August Smart Lock

 

[cmaier]

"Apple is somehow responsible by association for selling the product"

35 U.S. Code § 271 - Infringement of patent
whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

 

[OldSchoolMacGuy]

Good luck with that buddy.

 

[826317]

Another day at the office for Apple's legal team....

 

[PoppaKap]

His attorney

 

[Joe Rossignol]

"Apple is somehow responsible by association for selling the product"

35 U.S. Code § 271 - Infringement of patent
whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

I've changed that to: "For selling the product, Apple is somehow being solely targeted here rather than August."

 

[Menel]

I've changed that to: "For selling the product, Apple is somehow being solely targeted here rather than August."

That's easy.

Apple has biiiiig pockets with which to settle out of court. August, as a startup, does not.

 

[Xavier]

There is that ridiculous door lock knob again. So hideous.

 

[jimothyGator]

Why is Apple being targeted? The same reason why Willie Sutton robbed banks: "Because that's where the money is."

 

[cmaier]

I've changed that to: "For selling the product, Apple is somehow being solely targeted here rather than August."

Complaint against august may still be coming, or august may not have sufficient presence in southern district texas to allow it to be sued there.

 

[stopthenonsense]

"Apple is somehow responsible by association for selling the product"

35 U.S. Code § 271 - Infringement of patent
whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

You have to notify the company selling the product that it infringes on a patent before you outright sue them. No company can possibly be expected to know if a product they are selling is in violation of a patent.

 

[cmaier]

You have to notify the company selling the product that it infringes on a patent before you outright sue them.

No, you most certainly do not.

 

[BayNative]

You don't mess with a dude named Kilbourne.

 

[rek89]

Wish there was a link to his actual Southern Texas filing. The claims of his granted patent that he can try to enforce actually include the deadbolt itself, so I would like to see his legal theory that makes Apple responsible here.

 

[cmaier]

Wish there was a link to his actual Southern Texas filing. The claims of his granted patent that he can try to enforce actually include the deadbolt itself, so I would like to see his legal theory that makes Apple responsible here.

35 U.S.C. § 271(c): "Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or an apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer."

(but very good point. it's much harder to prove indirect infringement of this sort)

 

[thisisnotmyname]

That's easy.

Apple has biiiiig pockets with which to settle out of court. August, as a startup, does not.

August was acquired by one of the largest lock manufacturers in the world. Perhaps he was unaware though.

 

[rek89]

35 U.S.C. § 271(c): "Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or an apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer."

(but very good point. it's much harder to prove indirect infringement of this sort)

Yep, I'm well-acquainted with the concept of contributory infringement, but the article doesn't say that it what is being alleged. Additionally, as someone mentioned above, Defendant will have to prove that Apple was aware of the patent. There are also some specific geometric limitations and this gem ("said housing configured to be mounted utilizing only the existing mounting screws of said pre-existing deadbolt lock;" (emphasis mine)) that may be problematic in the quest to relieve Apple of some of its new iPhone X money.

 

[OneTokenRing...]

I wonder if this was filed before Assa Abloy purchased them....

https://www.cnbc.com/2017/10/19/assa-abloy-buys-august-home.html
https://techcrunch.com/2017/10/19/swedish-lock-maker-assa-abloy-set-to-acquire-august-home/
"
In addition to Assa Abloy being a multi billion dollar a year lock, hinge, handle and all around door hardware company looks like August counts these small organizations as product and distribution partners....."August counts Airbnb, Amazon, Apple, Google, HomeAway, Nest and Wal-Mart as its partners."

I guess going after Apple solely will scare away, incentivize all the other small fish circling the pond

EDIT : I'm being facetious. It is well known that whether apple is in the right or wrong, invoking their name in the courts or media will automatically grant the accuser a higher profile, no matter the claim.

 

[cmaier]

Yep, I'm well-acquainted with the concept of contributory infringement, but the article doesn't say that it what is being alleged. Additionally, as someone mentioned above, Defendant will have to prove that Apple was aware of the patent. There are also some specific geometric limitations and this gem ("said housing configured to be mounted utilizing only the existing mounting screws of said pre-existing deadbolt lock;" (emphasis mine)) that may be problematic in the quest to relieve Apple of some of its new iPhone X money.

The Complaint does allege contributory infringement and alleges Apple was aware of the patent (arguable how much detail you need in the Complaint for that, but under Iqbal standard maybe more than is in there). They say essentially that Apple knew because Apple requested the actual hardware from plaintiff as part of the app review process for plaintiff's app. Of course that, in itself, isn't all too compelling, which is why it's hard to prove contributory (looking backward - from the point the complaint is served, however, continued sales would still count as infringement and harder to argue that Apple is n't aware now).

 

[rek89]

(looking backward - from the point the complaint is served, however, continued sales would still count as infringement and harder to argue that Apple is n't aware now).

Yep, agreed there. Looking at the actual patents though, I can't imagine Apple's stable of attorneys is going to have too much trouble knocking this one down, unless of course the settlement to make it go away is less than the attorneys' fees.

 

[Joe Rossignol]

Wish there was a link to his actual Southern Texas filing. The claims of his granted patent that he can try to enforce actually include the deadbolt itself, so I would like to see his legal theory that makes Apple responsible here.

 

[cmaier]

Yep, agreed there. Looking at the actual patents though, I can't imagine Apple's stable of attorneys is going to have too much trouble knocking this one down, unless of course the settlement to make it go away is less than the attorneys' fees.

might not be apple's problem. August may have to indemnify Apple.

 

[cmwade77]

35 U.S.C. § 271(c): "Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or an apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer."

(but very good point. it's much harder to prove indirect infringement of this sort)

He has to prove that Apple knew about his patent and that they knew that August was infringing on his patent and weren't under the impression that it was licensed.

Chances are he would quite literally be able to make a case against August, but to make a case against Apple is going to be exceedingly difficult.
[doublepost=1509398092][/doublepost]

Yep, agreed there. Looking at the actual patents though, I can't imagine Apple's stable of attorneys is going to have too much trouble knocking this one down, unless of course the settlement to make it go away is less than the attorneys' fees.

I think they might.

 

[alexgowers]

"Apple is somehow responsible by association for selling the product"

35 U.S. Code § 271 - Infringement of patent
whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

I’m sure a 3rd party isn’t included in that. The product itself infringes on a patent and can only be sold once to a third party. NOTE: it does not say reseller anywhere in that definition.

Also “makes, uses, offers to sell or sells” could be seen as a list of requirements that all need to be done. For example if I use an iPhone that infringes on a patent am I personally liable for compensation? According to you and your definition I am!

 

[cmaier]

I’m sure a 3rd party isn’t included in that. The product itself infringes on a patent and can only be sold once to a third party. NOTE: it does not say reseller anywhere in that definition.

Also “makes, uses, offers to sell or sells” could be seen as a list of requirements that all need to be done. For example if I use an iPhone that infringes on a patent am I personally liable for compensation? According to you and your definition I am!

You can be pretty sure but you’d be wrong. If you sell an infringing product and you are not licensed you infringe. Period.
[doublepost=1509401984][/doublepost]

He has to prove that Apple knew about his patent and that they knew that August was infringing on his patent and weren't under the impression that it was licensed.

Chances are he would quite literally be able to make a case against August, but to make a case against Apple is going to be exceedingly difficult.
[doublepost=1509398092][/doublepost]
I think they might.

Again, infringement is allegedly ongoing. So Apple is aware of the patent NOW and so sales from today onward are a different story.