DCT
2:18-cv-00666
Aqua Lighting Tech LLC v. Leslie's Poolmart Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Aqua Lighting Technologies, LLC (Virginia)
- Defendant: Leslie's Poolmart, Inc. (Delaware)
- Plaintiff’s Counsel: Sheridan Ross P.C.
- Case Identification: 2:18-cv-00666, D. Ariz., 03/01/2018
- Venue Allegations: Venue is alleged to be proper in the District of Arizona because the Defendant, Leslie's Poolmart, Inc., has its corporate headquarters and nerve center in the state, operates approximately 90 retail outlets there, and has allegedly committed acts of patent infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s sale of various third-party underwater LED pool and spa lighting systems infringes a patent related to controlling multi-color LED assemblies via standard power switches.
- Technical Context: The technology concerns a method for providing advanced, multi-color lighting effects in pools and spas by using energy-efficient LEDs that can be retrofitted into existing electrical systems without requiring complex new wiring.
- Key Procedural History: The complaint alleges that at least one of the Defendant’s suppliers, Pentair, was aware of the patent-in-suit, citing it as prior art in its own U.S. Patent No. 7,514,884. This allegation forms the basis for the claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-23 | ’291 Patent Priority Date (Provisional App. No. 60/171,891) |
| 2000-12-20 | ’291 Patent Application Filing Date |
| 2003-09-09 | ’291 Patent Issue Date |
| 2005-04-28 | Filing date of Pentair patent application that cites the '291 Patent |
| 2009-04-07 | Issue date of Pentair patent that cites the '291 Patent |
| 2018-03-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,616,291 - "Underwater Lighting Assembly"
The Invention Explained
- Problem Addressed: The patent addresses the unreliability and limited functionality of conventional incandescent underwater lighting for pools and spas, which were prone to failure and required cumbersome, easily lost snap-on lenses to change colors (’291 Patent, col. 1:29-49). Replacing these bulbs was also expensive and difficult, often requiring draining the pool or spa (Compl. ¶7; ’291 Patent, col. 1:46-65).
- The Patented Solution: The invention is an underwater lighting assembly using more durable and efficient Light Emitting Diodes (LEDs) arranged in separate "banks," often by color (’291 Patent, col. 5:35-44). A key aspect is an on-board programmable controller that interprets simple on-off cycles from a standard power switch to change colors or activate pre-programmed "light shows," eliminating the need for new wiring or physical lenses (Compl. ¶¶ 8-9; ’291 Patent, col. 5:26-44). The controller can fade one color out while fading another in, creating smooth transitions (’291 Patent, col. 7:10-14).
- Technical Importance: The technology enabled the retrofitting of sophisticated, multi-color, and dynamic lighting features into existing pools and spas using the simple two-wire power systems already in place for older incandescent lights (Compl. ¶9).
Key Claims at a Glance
- The complaint asserts infringement of claims including, but not limited to, independent claims 1 and 7 (Compl. ¶16).
- Independent Claim 1 recites an underwater lighting assembly with the following essential elements:
- a waterproof housing for underwater submersion;
- a round front access LED board disposed within a waterproof chamber of the housing;
- a plurality of LEDs and a programmable controller mounted on said board, with the LEDs arranged in a plurality of banks;
- a power supply for the controller and LEDs; and
- the controller is configured to control the LEDs in response to switching the power supply between on and off states.
- Independent Claim 7 recites a control system for controlling LEDs in an underwater lighting assembly, comprising a power supply and a "non-board" (alleged to be a typo for "on-board") programmable controller that generates operating signals in response to power supply switching (Compl. ¶¶ 15, fn. 1).
- The complaint also mentions dependent claims 2 and 3, which add limitations for independent intensity control and a configuration of three banks of LEDs, respectively (Compl. ¶14).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are multiple lines of color-changing underwater LED lights sold by Defendant Leslie's Poolmart, Inc., including: Hayward Pool Products' "ColorLogic" line, J&J Electronics' "ColorSplash" line, Jandy Industries' "WaterColors" line, and Pentair Pool Products' "Intellibrite 5G" and "GloBrite" lines (Compl. ¶¶ 19, 21, 25, 32, 36, 39).
Functionality and Market Context
The complaint alleges that each accused product line consists of a waterproof lighting fixture containing a circuit board with multiple LEDs, which are grouped into banks (Compl. ¶¶ 21, 26, 33, 37). A controller on the board is alleged to interpret power-cycling from a standard wall switch to change between fixed colors and pre-programmed light shows (Compl. ¶¶ 22, 26, 33, 37). The complaint includes a photograph of the Hayward ColorLogic 4.0 product with its lens removed, showing the internal circuit board, LEDs, and controller components (Compl. p. 8). The complaint alleges that the manufacturers of these products ("the Suppliers") produce about 80% of the infringing LED lighting assemblies sold in the United States (Compl. ¶¶ 1, 20).
IV. Analysis of Infringement Allegations
The complaint’s infringement theory is that the accused products, as sold by Leslie's, contain all the elements of at least Claim 1 of the ’291 Patent.
’291 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An underwater lighting assembly comprising: a waterproof housing for underwater submersion; | The accused products are described as consisting of a "waterproof housing for underwater submersion" (Compl. p. 8). | ¶21 | col. 5:36-37 |
| a round front access LED board disposed within a water proof chamber of the housing; | The accused products are alleged to include a "round front access, LED board." A photo shows a circular assembly with an internal circuit board (Compl. p. 8). | ¶21 | col. 5:38-40 |
| a plurality of LEDs and a programmable controller mounted on said board within the housing, the LEDs arranged in a plurality of banks, | The accused products are alleged to have a plurality of LEDs "grouped into banks" and a "controller located on the board." The complaint points to an array of LEDs and the controller's location on the pictured board (Compl. p. 9). | ¶¶21, 22 | col. 5:40-44 |
| and a power supply that powers the controller and the LEDs, | The products are alleged to be "powered by a power supply within the unit." | ¶21 | col. 5:44-45 |
| the controller configured to control the LEDs in response to switching of the power supply between on and off states. | The complaint quotes product manuals stating that changing colors and modes is "controlled by cycling the power supplied to the board on and off," a method described as "power-cycling" (Compl. p. 9). | ¶¶21, 22 | col. 5:45-48 |
Identified Points of Contention
- Technical Questions: A key question will be whether the accused products' controllers function in the specific manner claimed. The complaint alleges that user manuals for the Jandy WaterColors lights instruct users to "turn the light OFF and then ON within three (3) seconds" to change colors, which appears to directly map to the claim limitation of controlling the LEDs "in response to switching of the power supply between on and off states" (Compl. ¶33). The complaint provides similar allegations for each accused product line (Compl. ¶¶ 22, 26, 37).
- Scope Questions: The complaint accuses both fully-integrated lighting fixtures and replacement bulbs, such as the J&J Electronic ColorSplash LXG, which "screw into standard Edison base light sockets housed in waterproof encasements" and are "not independently waterproof" (Compl. ¶28). A dispute may arise over whether such a replacement bulb, which relies on a separate, pre-existing housing for its waterproof characteristic, meets the "underwater lighting assembly comprising: a waterproof housing" limitation of Claim 1.
V. Key Claim Terms for Construction
The Term: "programmable controller"
Context and Importance: This term is central to the invention, as it performs the function of interpreting power cycles to change lighting modes. Practitioners may focus on this term because the accused products likely use common microcontrollers. The dispute could turn on whether a pre-programmed chip that executes a fixed set of instructions qualifies as "programmable," or if the term implies the ability for an end-user or installer to alter its programming.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification refers to a "preprogrammed computer algorithm" and an "on-board programmable processors," which may suggest that the "programmable" nature refers to the state of the controller as supplied (i.e., having been programmed at the factory), not that it must be further programmable by the user (’291 Patent, col. 4:43-44, col. 4:58-59).
- Evidence for a Narrower Interpretation: A defendant could argue that in the context of the art, "programmable" implies field-programmability, and that a simple state machine that responds to power cycles is not a "programmable controller." The specification notes that "Programming of the processor can simply be changed, or updated at a later time," which might support an argument that some form of re-programmability is contemplated (’291 Patent, col. 5:11-14).
The Term: "underwater lighting assembly"
Context and Importance: The scope of this term is critical for determining whether replacement bulbs, which are not themselves complete assemblies, infringe. The complaint accuses the J&J ColorSplash LXG replacement bulb, which is designed to be installed into a separate waterproof fixture (Compl. ¶28). The photograph shows a product that appears to be a bulb with an Edison-style screw base (Compl. p. 13).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The preamble term is not typically limiting, and Claim 1 uses the open-ended transition word "comprising." A plaintiff could argue that the bulb is a critical component of the overall "assembly" and is sold for the express purpose of creating an infringing system.
- Evidence for a Narrower Interpretation: The patent figures and detailed description consistently depict a complete, self-contained unit including the housing, lens, and electronics (e.g., ’291 Patent, FIG. 1, FIG. 3). This may support an argument that the claimed "assembly" must be a single, integrated product and does not cover a component part like a replacement bulb.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement based on the defendant supplying products with installation and operation manuals that "instruct[] the user to connect" the products and operate them via power-cycling, which allegedly constitutes direct infringement (Compl. ¶¶ 9, 22, 26, 45).
- Willful Infringement: Willfulness is alleged based on the assertion that at least one of the defendant's suppliers (Pentair) was aware of the ’291 Patent, having cited it as prior art in its own patent application. The complaint makes the inferential claim that "then, Leslie's was aware of the patent and its infringement thereof," alleging this constitutes "willful and wanton disregard for ALT's patent rights" (Compl. ¶47, p. 23:1-8).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Does the claim term "underwater lighting assembly comprising: a waterproof housing" read on replacement LED bulbs that are not independently waterproof but are designed to be installed in separate, pre-existing waterproof fixtures? The resolution will determine whether a significant portion of the accused products fall within the patent's scope.
- A second central question will be the construction of "programmable controller": Will the court define this term to mean any controller that executes pre-loaded firmware, as the accused products likely do, or will it require a higher degree of re-programmability, potentially creating a non-infringement argument for the defendant?
- A key evidentiary question will concern willfulness: Can the plaintiff demonstrate that knowledge of the patent-in-suit by a third-party supplier (Pentair) can be imputed to the retailer (Leslie's) to establish the knowledge and intent required for a finding of willful infringement?