Last year, SemaConnect was sued for patent infringement by ChargePoint. The reason? In their initial filing, ChargePoint wrote that SemaConnect had “recently announced that it is in the process of entering into contracts over the next 90 days to deploy, for free, at least $16 million in competing EV charging infrastructure—using technology that will indisputably infringe ChargePoint’s patents… ChargePoint will not be able to compete with the SemaConnect program and will, for all practical purposes, permanently lose those customers who accept the SemaConnect offer.” Calling itself “the party that invented the industry,” ChargePoint claimed that the Electrify America contract awarded to SemaConnect meant that they would be “left with virtually no ability to compete for this business” for the duration of the contract.
ChargePoint claimed that SemaConnect had violated four patents for networked electric vehicle charging and asked the Court for an injunction and monetary damages. The good news? The Federal Court sided with us – twice.
EV Charging Patents
The lawsuit depended on eight claims found in four of ChargePoint’s patents. These patents generally described EV charging stations that use a network. These stations connect a car to the electrical grid. The main problem was that these stations used a remote server, which could turn energy flow on and off based on an idea called “demand response.”
There are laws regulating what can be patented. Section 101 of the US Patent Act says that if you invent, discover, or improve “any new or useful process, machine, manufacture, or composition of matter,” then you may obtain a patent. It must be useful, non-obvious, and not an abstract – in effect, something truly new and different. Alice Corp v. CLS Bank International, decided by the US Supreme Court in 2014, further decided that using computer software to do a normal business action did not mean your business action was automatically eligible for patent. That action was still an abstract idea, even if you use a computer.
What the Court Said
Last year, the US District Court agreed with us and dismissed the case because the patent claims were invalid. “Sending a request, receiving back a command, and executing the demand in an expected way is a process that has been performed long before the arrival of servers and networking equipment,” Judge Garvis wrote. The language used by ChargePoint in their claims was too broad and attempted to patent an abstract business idea as their own. Furthermore, because that language was so broad, it would “preempt competitors from developing other, more specific methods for managing the power grid over a network or creating customized user experiences.” These overly restrictive patent claims could prevent any other EV charging company from building or improving a charging station that connects to any server for communication or credit card verification. We won the case, and ChargePoint appealed.
Last month, the US Court of Appeals sided with us again for the same reasons. Concepts such as using a machine to communicate with a server, or using demand response to “help match supply and demand” are both normal abstract business ideas. There were already companies using remote servers for communication or demand response to reduce energy use based on demand. According to Judge Prost, networked charging stations are a good idea, but “the specification [in ChargePoint’s patents] gives no indication that the patented invention involved how to add network connectivity to these charging stations in an unconventional way. From the claims and the specification, it is clear that network communication is the only possible inventive concept. Because this is the abstract idea itself, this cannot supply the inventive concept at step two [of the process for deciding patent eligibility].” The patent claims that ChargePoint used in their lawsuit were too broad and non-specific to be enforceable.
Because the Federal Court decided that ChargePoint does not own the concept of networked EV charging, that means the industry can continue to find new ways to improve the charging experience through smart, networked features such as credit cards, electronic currency, automated demand response, station management software, vehicle-to-grid, or technology that doesn’t even exist yet! The EV charging industry as a whole has the freedom to find new ways to meet customers’ needs through network capabilities.
We’re excited to continue to serve our customers using our smart networked stations. Among other features, the SemaConnect Network allows property managers to recoup energy costs through a credit card payment system and to control who can use a station. It allows EV drivers to view station status on a map, to manage their payment options, and to get mobile alerts when charging is complete. Finally, it allows SemaConnect Customer Service to monitor station health from our headquarters in Maryland, send over the air software updates to existing stations, and to quickly help drivers who need help initiating a charge.
Smart networks create true value for charging station owners and drivers. Thanks to the Court’s decision, SemaConnect, ChargePoint, and every other EV charging vendor can continue to create new solutions for our customers. It is through fair competition and non-restrictive patents that we can create an industry that makes the electric vehicle charging experience the best that it can be.
Click here to learn more about the SemaConnect Network.