SmartLabs Enjoined; Parties’ Smart Management Focuses Issues in Energy Meter Litigation


P3 International (P3) is a New York consumer electronics company that makes the Kill A Watt electric power meter.  The Kill A Watt meter allows consumers to determine how much energy particular appliances are using.  You simply plug the meter into the wall, plug the appliance into the meter, and monitor the energy consumption of the appliance on the meter’s LCD display. 

The Kill A Watt meter is protected by U.S. Patent No. 6,095,850 (‘850 patent), which is directed to an electric adapter (1) having a plug (2) on its rear side which can be plugged into an electric socket (7).  The adaptor has an outlet socket with three holes (3a, 3b, 3c) on the front and a display (4) to show electrical parameters of the appliance being monitored.


When the user presses the display mode selection switch (6) the display (4) shows, in sequence, voltage level, current value, watt, kilowatt-hour, apparent power value and power factor.

P3 is the exclusive licensee of the ‘850 patent.  In June, P3 sued SmartLabs Inc. (SmartLabs), UPM Marketing Inc.  and UPM Technology USA, inc. (collectively “UPM”) in federal court in Manhattan alleging that the electric device makers were infringing the ‘850 patent. 

According to the complaint (p3_complaint.pdf), UPM’s infringing devices are the EM100, EM130, EM338 and EM369 Plug-in Energy Meters infringe, and SmartLabs also imports and sells some of UPM’s meters.  The complaint also alleged that SmartLabs intends to import and sell an infringing “Save-A-Watt” energy meter.

In August, the defendants filed counterclaims for declaratory judgment of noninfringement, invalidity and unenforceability of the ‘850 patent (smartlabs_answer.pdf).

This month Judge Denise L. Cote signed a stipulation and order (p3_order.pdf) temporarily enjoining SmartLabs from making, importing, offering for sale or selling the Save-A-Watt meter pending the result of the lawsuit.  

The temporary injunction ordered by Judge Cote is one component of an agreement between P3 and SmartLabs to narrow the issues and focus the case.  The two parties also agreed to sever from the suit the issue of SmartLabs’ infringement of the ‘850 and to dismiss with prejudice SmartLabs’ counterclaim of noninfringement.

Thus, the case between P3 and SmartLabs will only go forward on the issues of validity and enforceability of the ‘850 patent.  If P3 prevails and at least one claim of the patent is found to be valid and enforceable, SmartLabs will be permanently enjoined from moving forward with its Save-A-Watt meter:

It is further stipulated and agreed that, once this case is finally terminated by order, judgment, decree, dismissal, settlement or otherwise, if any one of claims 1, 4, 5, 6, 7, 10 or 11 of United States Patent No. 6,095,850 has not been adjudged to be invalid or unenforceable, SmartLabs shall be permanently enjoined, by this Stipulation and Order, from making, importing into the United States, selling or offering for sale the Save-A-Watt during the term of that patent…

Since SmartLabs hasn’t sold any of the allegedly infringing devices yet, there are no money damages to be gained by P3 through a full court press on infringement.  This stipulation is a good example of a sensible, efficient approach to patent litigation (in contrast to the Nichia-Seoul Semiconductor lawsuit I blogged about here and here) where the parties expend legal fees and use court time only as necessary to decide the issues that actually matter for disposition of the case. 

Eric Lane Avatar

Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.