DCT

2:23-cv-01084

Joovv Inc v. Mito Red Light Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-01084, D. Ariz., 06/13/2023
  • Venue Allegations: Venue is alleged to be proper in the District of Arizona because the defendant is an Arizona corporation that resides in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s portfolio of LED red light therapy devices and accessories infringes seven patents related to modular photobiomodulation systems, mounting apparatuses, and ornamental designs.
  • Technical Context: The technology involves modular LED light panels designed to emit therapeutic wavelengths of red and near-infrared light, a technology central to the growing consumer market for at-home health and wellness devices.
  • Key Procedural History: The complaint asserts that Plaintiff sent Defendant detailed notice letters with preliminary infringement analyses in January 2020 and April 2021. It also notes that two of the patents-in-suit (U.S. Patent Nos. 10,639,495 and 10,478,635) were subject to ex parte reexamination proceedings initiated by a third-party competitor, Platinum LED, and that both patents were subsequently reissued with reexamination certificates, confirming their patentability. Plaintiff also cites a prior successful litigation against Platinum LED, which concluded with a consent injunction against that entity.

Case Timeline

Date Event
2017-02-17 U.S. Patent No. 10,828,505 Priority Date
2018-10-22 U.S. Patent Nos. 10,639,495, 10,478,635, 11,033,752, 11,253,719, 11,524,172 Priority Date
2019 Mitored allegedly began selling Accused Infringing Products
2019-11-19 U.S. Patent No. 10,478,635 Issued
2020-01-20 Plaintiff sent first notice letter to Defendant
2020-05-05 U.S. Patent No. 10,639,495 Issued
2020-09-21 U.S. Design Patent No. D963,873 Priority Date
2020-11-10 U.S. Patent No. 10,828,505 Issued
2021-04-05 Plaintiff sent second notice letter to Defendant
2021-06-15 U.S. Patent No. 11,033,752 Issued
2022-02-10 U.S. Patent No. 10,639,495 Reissued
2022-02-22 U.S. Patent No. 11,253,719 Issued
2022-03-11 U.S. Patent No. 10,478,635 Reissued
2022-05-31 Plaintiff initiated litigation against Platinum LED
2022-09-13 U.S. Design Patent No. D963,873 Issued
2022-12-13 U.S. Patent No. 11,524,172 Issued
2023-03-21 Platinum LED litigation concluded
2023-06-13 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,639,495 - "Photobiomodulation Therapy Systems and Methods"

  • Issued: May 5, 2020

The Invention Explained

  • Problem Addressed: The patent’s background section identifies a need in the market for a photobiomodulation therapy system that can treat large areas of the body, as many existing devices are too small and require multiple, time-consuming sessions (’495 Patent, col. 1:44-50).
  • The Patented Solution: The invention provides a system of multiple light therapy devices that can be communicatively coupled to function as a single, cohesive unit. The system allows one device to be set to a "lead mode" to send operational instructions to other devices set in a "follow mode," enabling coordinated and expanded treatment areas (’495 Patent, col. 2:19-25; col. 7:48-55).
  • Technical Importance: This modular approach allows for scalable and customizable light therapy configurations, which may increase the efficiency and accessibility of large-area or full-body treatments for both home and clinical use (’495 Patent, col. 1:44-50).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent claim 1 (Compl. ¶41).
  • Essential elements of Claim 1 include:
    • A light therapy system comprising a first light therapy device and a second light therapy device.
    • Each device has a housing, a plurality of lights, and is configured to operate in at least a "lead mode" and a "follow mode," selectable via a switch.
    • When one device is in "lead mode" and the other is in "follow mode," the "follow" device performs operations as "instructed by" the "lead" device.
    • The claim specifies this master-slave control is bidirectional, meaning either device can act as the "lead" device to control the other.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 10,828,505 - "Therapeutic Light Source and Hanging Apparatus"

  • Issued: November 10, 2020

The Invention Explained

  • Problem Addressed: The patent describes a lack of prior art solutions for light therapy apparatuses that can be easily adjusted to a desired height for treating specific areas of a user's body, noting that many existing devices are impractical for home use due to their size or design (’505 Patent, col. 1:21-34).
  • The Patented Solution: The invention is a therapy lighting assembly that includes a "positioning system" with an integrated "winching system" for adjusting the vertical position of the light panel. This system comprises attachment posts on the light housing, attachment members that couple to those posts, and a connection member with the winching system, such as a pulley, to raise and lower the device (’505 Patent, Abstract; Fig. 2).
  • Technical Importance: The invention provides a user-adjustable mounting solution, such as for an over-the-door setup, that makes larger light therapy panels more versatile and convenient for home use (’505 Patent, col. 3:5-10).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent claim 1 (Compl. ¶49).
  • Essential elements of Claim 1 include:
    • A light therapy system comprising a hollow housing with LEDs that emit light at wavelengths of at least 600 nm.
    • A plurality of attachment posts are coupled to the housing's first end.
    • A positioning system includes attachment members detachably coupled to the posts, a connection member, and a "winching system" integrated with the connection member to adjust the vertical position of the housing.
    • The housing is specified as a "hollow extruded core" with end plates that have slots and openings to receive the attachment members.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 10,478,635 - "Photobiomodulation Therapy Systems and Methods"

  • Issued: November 19, 2019
  • Technology Synopsis: This patent addresses the inefficiency of small light therapy devices by disclosing a system of communicatively coupled devices (’635 Patent, col. 1:40-44). The system enables a first device set to a "lead mode" to control the operations of a second device set to a "follow mode," creating a larger, synchronized treatment area (’635 Patent, col. 2:11-18).
  • Asserted Claims: At least Claim 1 (Compl. ¶57).
  • Accused Features: The complaint accuses Defendant’s modular panel systems, such as "MitoMOD" and "MitoMODULAR," which can be physically and communicatively linked together to form larger arrays (Compl. ¶¶10, 57).

U.S. Patent No. 11,253,719 - "Photobiomodulation Therapy Systems and Methods"

  • Issued: February 22, 2022
  • Technology Synopsis: This patent describes a system where multiple light therapy devices can be communicatively coupled, either through a wired or wireless connection, to operate in concert (’719 Patent, Abstract). Each device can be configured to operate in a "lead mode" (to control others), a "follow mode" (to be controlled), or a "neutral mode" (to operate independently) (’719 Patent, col. 2:11-23).
  • Asserted Claims: At least Claim 1 (Compl. ¶65).
  • Accused Features: The allegations target the ability of Defendant's various light therapy panels to be connected and controlled in a coordinated manner (Compl. ¶¶10, 65).

U.S. Patent No. 11,033,752 - "Photobiomodulation Therapy Systems and Methods"

  • Issued: June 15, 2021
  • Technology Synopsis: The technology focuses on the mechanical and electrical linking of modular photobiomodulation devices to form larger systems (’752 Patent, col. 1:41-45). The patent describes devices that can be coupled in side-by-side or top-to-bottom orientations and electrically connected via power management systems (’752 Patent, col. 2:40-52).
  • Asserted Claims: At least Claim 1 (Compl. ¶73).
  • Accused Features: The complaint targets Defendant's products, including the "MitoMODULAR" system, which can be physically and electrically connected to form larger, customized arrays (Compl. ¶¶10, 73).

U.S. Patent No. 11,524,172 - "Photobiomodulation Therapy Systems and Methods"

  • Issued: December 13, 2022
  • Technology Synopsis: This patent covers a system of communicatively coupled light therapy devices, each featuring a control panel with input buttons and a pair of indication lights (’172 Patent, Abstract). The indication lights are configured to inform the user whether the device is set to emit red light, near-infrared light, or both (’172 Patent, col. 3:11-24).
  • Asserted Claims: At least Claim 1 (Compl. ¶81).
  • Accused Features: The infringement allegations are directed at Defendant's light therapy panels that feature user controls and can be linked to operate together (Compl. ¶¶10, 81).

U.S. Design Patent No. D963,873 - "Floor Stand for a Photobiomodulation Therapy Device"

  • Issued: September 13, 2022
  • Technology Synopsis: This design patent protects the ornamental appearance of a floor stand for a light therapy device. The claimed design consists of a flat base with two upward-extending U-shaped cradles that hold the device (D’873 Patent, Figs. 1, 7).
  • Asserted Claims: The ornamental design as shown and described in the patent (Compl. ¶89).
  • Accused Features: The complaint accuses the floor stands sold by Defendant for use with its light therapy devices of being "ornamentally designed in a substantially similar manner" to the patented design (Compl. ¶¶89-90).

III. The Accused Instrumentality

Product Identification

  • The accused products include a range of LED light therapy devices marketed under names such as "Mito Red Original," "MitoMOD," "MitoMODULAR," "MitoPRO," and "MitoADAPT," along with associated racks, stands, multi-light setups, and mounting systems (Compl. ¶¶3, 10).

Functionality and Market Context

  • The accused products are described as LED light therapy panels designed to emit red and near-infrared light for therapeutic purposes (Compl. ¶¶8, 10). The complaint alleges these devices are direct competitors to Plaintiff's products and emphasizes their modular functionality, which allows them to be connected into larger arrays (Compl. ¶¶10-11). The complaint includes a side-by-side photographic comparison to allege that the parties' respective LED therapy light panels are "strikingly similar" in appearance (Compl. ¶11, p. 4). A similar visual comparison is used to allege that Defendant's floor stand has an ornamental design substantially similar to that claimed in the D’873 Patent (Compl. ¶90, p. 15).

IV. Analysis of Infringement Allegations

The complaint states that claim-chart exhibits are attached but does not include them in the filing. The infringement allegations for the lead patents are therefore summarized below in prose.

  • ’495 Patent Infringement Allegations: The complaint alleges that the Accused Infringing Products infringe at least Claim 1 of the ’495 Patent by being modular light therapy devices that can be made, used, and sold to operate in a communicatively coupled manner (Compl. ¶41). This theory appears to map the accused products' ability to be linked together onto the patent's claimed "lead mode" and "follow mode" system, where one device controls the operation of another.
  • ’505 Patent Infringement Allegations: The complaint alleges that the Accused Infringing Products, when sold and used with their associated mounting systems, infringe at least Claim 1 of the ’505 Patent (Compl. ¶49). The infringement theory is based on the combination of the light panel (the claimed "hollow housing") with a positioning and hanging apparatus that allegedly includes the claimed "winching system" for height adjustment.

Identified Points of Contention

  • Scope Questions: A central question for the '495 family of patents may be whether the communication protocol between Defendant's connected panels meets the specific "lead mode" and "follow mode" limitations, particularly the bidirectional control recited in Claim 1 of the ’495 Patent. For the ’505 Patent, a key issue may be whether the term "winching system," described in the patent in the context of a pulley apparatus, can be construed to cover the specific height-adjustment hardware sold with the accused products.
  • Technical Questions: Evidentiary questions may arise regarding how the accused modular products actually communicate. For instance, what evidence demonstrates that one accused panel "instructs" another with specific operational commands, as opposed to a simpler synchronization signal? For the ’505 Patent, a factual question will be whether the accused light panels possess the detailed structural elements of the claimed "hollow extruded core" and "end plates."

V. Key Claim Terms for Construction

  • The Term: "performs operations as instructed by" (’495 Patent, Claim 1)

    • Context and Importance: This phrase is central to defining the required functional relationship between the coupled devices. The outcome of the infringement analysis for the '495 patent family may depend on whether the interaction between the accused products constitutes giving and receiving "instructions," a term that implies a higher level of control than mere synchronization. Practitioners may focus on this term to dispute whether the accused system's communication protocol falls within the claim's scope.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes the general concept of one device controlling another, stating that when coupled, the devices "operate in a specific manner" and one "may perform operations as instructed by the first light therapy device" (’495 Patent, col. 2:15-18, 5:10-12). This could support a construction covering any master-slave control system.
      • Evidence for a Narrower Interpretation: The claim requires this instructional relationship to be bidirectional, which may suggest a more complex and specific communication protocol than simple one-way mirroring. The specification also ties the instructions to specific user commands like setting treatment time or mode, potentially limiting the term to the transmission of these specific commands (’495 Patent, col. 8:17-25).

  • The Term: "winching system" (’505 Patent, Claim 1)

    • Context and Importance: Infringement of the ’505 Patent appears to hinge on whether the accused mounting hardware includes a "winching system." The construction of this term will determine if the accused height-adjustment mechanism, which may be a simple rope-and-ratchet or pulley, meets this limitation.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent's summary describes the invention more broadly as a "positioning system... wherein the winching system adjusts the height of the hollow housing" (’505 Patent, col. 2:15-17). This language could support construing the term to encompass any apparatus using a cord or cable to raise and lower the device.
      • Evidence for a Narrower Interpretation: The detailed description and Figure 2 illustrate a specific embodiment of the positioning system as a "pulley 309 with a cable 307 threaded through" it (’505 Patent, col. 4:25-29; Fig. 2). A defendant may argue that the term "winching system" implies a mechanism with a mechanical advantage, such as a spool or crank, that is absent from a simple pulley.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement for all asserted patents, stating that Defendant provides instructions to consumers on how to use the Accused Infringing Products in an infringing manner, such as by connecting multiple panels to form a larger system (Compl. ¶¶42, 50, 58, 66, 74, 82).
  • Willful Infringement: Willfulness is alleged for all seven patents. The complaint bases this allegation on Defendant’s alleged pre-suit knowledge, citing two detailed notice letters sent in January 2020 and April 2021 that allegedly included preliminary claim charts for asserted patents (Compl. ¶¶13, 16, 43, 59). The complaint also asserts that Plaintiff’s public patent marking and website provided further notice to Defendant (Compl. ¶¶31, 44).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of functional scope: does the communication protocol of Defendant's connected light panels implement the specific, bi-directional "lead mode" and "follow mode" control architecture required by claims like Claim 1 of the ’495 Patent, or does it utilize a simpler synchronization method that falls outside the patent's technical scope?
  • A second central question will be one of claim construction: can the term "winching system," rooted in the patent's description of a pulley apparatus, be construed broadly enough to read on the specific height-adjustment hardware sold and marketed with the accused products?
  • Given the allegations of multiple pre-suit notice letters with infringement contentions, a key question for damages will be willfulness: does the Defendant’s continued alleged infringement, in the face of specific notice and a competitor's prior consent injunction, rise to the level of egregious conduct that could warrant enhanced damages?