DCT
2:18-cv-05229
High End Systems Inc v. Elation Lighting Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: High End Systems, Inc. (Texas) and Richard Belliveau (individual)
- Defendant: Elation Lighting, Inc. (Nevada)
- Plaintiff’s Counsel: Perkins Coie LLP
- Case Identification: 2:18-cv-05229, C.D. Cal., 06/13/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the Central District of California and has committed acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s professional theatrical lighting products and control systems infringe nine patents related to digital communication architectures, internal thermal management, and optical systems for multi-parameter light fixtures.
- Technical Context: The technology concerns networked digital control systems for complex, automated theatrical lighting used in large-scale productions, where flexibility, reliability, and ease of setup are significant market drivers.
- Key Procedural History: The complaint alleges a prior business relationship wherein Defendant was granted a license to the asserted patents on June 4, 2015, through an amendment to a 2013 agreement with Plaintiff's predecessor-in-interest. Plaintiff alleges it notified the predecessor on August 1, 2017, that this license had expired due to Defendant's failure to meet certain terms, and that the underlying agreement was terminated effective September 30, 2017. This history of a prior license and its termination forms the basis for Plaintiff's allegations of pre-suit knowledge and willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 1999-09-10 | Earliest Priority Date (’756, ’217, ’348, ’745 Patents) |
| 1999-11-17 | Earliest Priority Date (’586 Patent) |
| 2000-03-14 | Earliest Priority Date (’239 Patent) |
| 2000-03-15 | Earliest Priority Date (’017, ’903 Patents) |
| 2000-11-20 | Earliest Priority Date (’015 Patent) |
| 2001-12-18 | '756 Patent Issued |
| 2002-10-01 | '217 Patent Issued |
| 2003-04-08 | '586 Patent Issued |
| 2003-05-27 | '348 Patent Issued |
| 2003-09-16 | '239 Patent Issued |
| 2003-12-16 | '745 Patent Issued |
| 2008-01-22 | '015 Patent (Reissue) Issued |
| 2011-12-13 | '017 Patent (Reissue) Issued |
| 2013-10-19 | Elation and Barco (HES's predecessor) enter Memorandum of Understanding |
| 2014-05-01 | Approximate date Elation allegedly gained knowledge of patents via draft license |
| 2014-05-20 | '903 Patent (Reissue) Issued |
| 2015-06-04 | Barco grants license to Elation for Asserted Patents |
| 2017-08-01 | HES notifies Barco that Elation's license has expired |
| 2017-09-30 | HES terminates the underlying agreement |
| 2018-06-13 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,331,756 - "Method And Apparatus For Digital Communications With Multiparameter Light Fixtures"
The Invention Explained
- Problem Addressed: The patent describes the high cost and labor involved in wiring large-scale, multi-parameter lighting systems, which often require running dedicated communication cables to numerous fixtures, some of which may be in physically inaccessible locations (’756 Patent, col. 2:19-40).
- The Patented Solution: The invention proposes using multiple, potentially different, communication systems to control a single lighting installation. For example, a primary, high-reliability wired network (like DMX512) can connect to a main group of fixtures, and one of these fixtures can then act as a "gateway" to a second, more convenient network (such as power-line or wireless communication) to control fixtures in hard-to-wire areas (’756 Patent, Abstract; Fig. 4). The patent also discloses architectures with two separate controllers connected to fixtures that are part of two distinct communication networks (’756 Patent, Fig. 5).
- Technical Importance: This hybrid network architecture provided lighting designers with greater flexibility and potentially lower installation costs by allowing them to mix and match communication technologies based on reliability needs and physical constraints (’756 Patent, col. 5:31-48).
Key Claims at a Glance
- The complaint asserts independent claim 14 (Compl. ¶20).
- Essential elements of claim 14 include:
- A lighting system comprising:
- a first digital communications system;
- a first controller connected to the first digital communications system;
- a second digital communications system;
- a second controller connected to the second digital communications system; and
- a plurality of multi-parameter light fixtures interconnected by the first digital communications system and also interconnected by the second digital communications system.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 6,459,217 - "Method And Apparatus For Digital Communications With Multiparameter Light Fixtures"
The Invention Explained
- Problem Addressed: The patent addresses the same technical challenge as its parent '756 patent: the complexity and cost of wiring and controlling large arrays of theatrical lights (’217 Patent, col. 2:19-45).
- The Patented Solution: The invention is a multi-parameter light fixture that contains two distinct digital communication "nodes" within its housing, each with its own communication port. This allows a single fixture to be natively connected to two separate communication systems simultaneously. The invention further requires that at least one of these nodes supports bi-directional communication, enabling the fixture to send data back to a controller for diagnostics or status reporting (’217 Patent, Abstract; col. 4:38-51).
- Technical Importance: By building dual-network capability and bi-directional communication directly into the light fixture, the invention enhances system redundancy, flexibility, and advanced control capabilities without requiring external gateway devices (’217 Patent, col. 8:1-10).
Key Claims at a Glance
- The complaint asserts independent claim 10 (Compl. ¶29).
- Essential elements of claim 10 include:
- A multi-parameter light fixture comprising:
- a housing;
- a lamp assembly contained in the housing;
- a first digital-communications node contained in the housing and having a first control output coupled to the lamp assembly and a first communications port; and
- a second digital communications node contained in the housing and having a second communications port;
- wherein at least one of the first and second digital communications nodes supports bi-directional digital communications.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 6,545,586 - "Method and Apparatus for Establishing and Using Hierarchy Among Remotely Controllable Theatre Devices"
- Technology Synopsis: This patent addresses the problem of identifying and configuring individual lights in a large, complex network (Compl. ¶37; ’586 Patent, col. 3:20-33). The invention describes a method where a DMX-compliant system can generate a list of connected devices and then instruct them one-by-one to operate in an observable way (e.g., turn on), allowing a technician to easily identify and assign control channels to each fixture remotely (’586 Patent, Abstract).
- Asserted Claims: Independent claim 60 (Compl. ¶37).
- Accused Features: The complaint alleges that the Accused Products support the Remote Device Management ("RDM") protocol, which allows a user to generate a device list and instruct a device to operate in an observable manner (Compl. ¶38).
U.S. Patent No. 6,570,348 - "Apparatus for Digital Communications with Multiparameter Light Fixtures"
- Technology Synopsis: This patent claims a multi-parameter light fixture containing two separate "addressable" digital communication nodes. Each node is designed to be networkable in an external communications system and has a control output coupled to the lamp assembly, enabling a single fixture to be controlled by two different external networks (’348 Patent, Abstract; Compl. ¶46).
- Asserted Claims: Independent claim 1 (Compl. ¶46).
- Accused Features: The complaint alleges the Accused Products are multi-parameter light fixtures that include at least two addressable digital communications nodes networkable in systems like DMX, Art-Net, or KlingNet (Compl. ¶47).
U.S. Patent No. 6,621,239 - "Method and Apparatus for Controlling the Temperature of a Multi-Parameter Light"
- Technology Synopsis: This patent describes an internal thermal management system for a theatrical light. The invention comprises a thermal sensor and a control circuit within the light's housing that actively controls a variable power supply to reduce power to the lamp when the sensor detects excessive heat, thereby preventing overheating (’239 Patent, Abstract; Compl. ¶54).
- Asserted Claims: Independent claim 3 (Compl. ¶54).
- Accused Features: The complaint alleges the Accused Products are multi-parameter lights containing a housing, variable power supply, LED lamp, thermal sensor, and a control circuit that reduces power to the lamp as the thermal sensor detects increased heat (Compl. ¶55).
U.S. Patent No. 6,664,745 - "Apparatus for Digital Communications with Multiparameter Light Fixtures"
- Technology Synopsis: This patent discloses a multi-parameter light fixture with two digital communication nodes and an integrated "gateway circuit" coupled between them. This internal gateway allows the fixture to act as a bridge, receiving control signals on one communication network and retransmitting them on another (’745 Patent, Abstract; Compl. ¶62).
- Asserted Claims: Independent claim 1 (Compl. ¶62).
- Accused Features: The complaint alleges the Satura Profile product is a multi-parameter light fixture that includes an electronics module with at least two communication nodes and includes a gateway circuit between them (Compl. ¶63).
U.S. Patent No. RE40,015 - "Lighting Device With Beam Altering Mechanism Incorporating a Plurality of Light Sources"
- Technology Synopsis: This patent describes an LED-based lighting device with a specific optical arrangement for creating color and gobo effects. The invention claims a lamp housing with two LED sources and two "aperture devices" (e.g., color or gobo wheels), where light from the LEDs is transmitted through a series of four apertures, at least two of which contain a color filter (’015 Patent, Abstract; Compl. ¶70).
- Asserted Claims: Independent claim 51 (Compl. ¶70).
- Accused Features: The Accused Products are alleged to contain at least two LED sources, a gobo wheel, and a color wheel (claimed as aperture devices), where the color wheel contains color filters (Compl. ¶71).
U.S. Patent No. RE43,017 - "Lighting Devices Using a Plurality of Light Sources"
- Technology Synopsis: This patent discloses a lighting apparatus designed for color temperature control. The invention uses a plurality of LEDs divided into two portions on two separate circuits; one portion emits light of a first color, while the second portion emits white light. A communications component can receive commands to vary the intensity of each portion independently to change the overall color temperature of the emitted light (’017 Patent, Abstract; Compl. ¶¶78-79).
- Asserted Claims: Independent claim 13 (Compl. ¶78).
- Accused Features: The Accused Products are alleged to be lighting apparatuses with a substrate, a plurality of LEDs on at least two circuits connected to a lamp driver, and a communications component (Compl. ¶79).
U.S. Patent No. RE44,903 - "Lighting Devices Using a Plurality of Light Sources"
- Technology Synopsis: This patent claims a lighting apparatus with a "means for remote positioning" (e.g., a motorized yoke) and at least four white LEDs. The key inventive concept is a "light parameter modifying component" (such as a color wheel) located to intercept the light from the LEDs and modify it in response to a control command (’903 Patent, Abstract; Compl. ¶86).
- Asserted Claims: Independent claim 22 (Compl. ¶86).
- Accused Features: The Accused Products are alleged to be lighting apparatuses with at least four white LEDs, a means for remote positioning, and a light parameter modifying component (Compl. ¶87).
III. The Accused Instrumentality
Product Identification
- The complaint accuses a wide range of Defendant’s theatrical lighting products, including fixtures and controllers from its ACL, Artiste, Chorus, CUEPIX, Design, Platinum, Satura, and ZCL series, among many others (Compl. ¶¶19, 28, 36, 45).
Functionality and Market Context
- The accused products are described as multi-parameter light fixtures and lighting controllers used in professional lighting systems (Compl. ¶21). The complaint alleges these products possess functionalities that map directly to the patented technologies, including the ability to connect to and operate on at least two different digital communication networks such as DMX, Wireless DMX, Art-Net, and KlingNet (Compl. ¶¶21, 30, 47).
- The complaint specifically alleges that certain products support the Remote Device Management ("RDM") protocol, which allows a system to generate a list of connected devices and provides a mechanism for an operator to instruct a single device on that list to operate in an observable manner (e.g., turn on a light) for identification and configuration (Compl. ¶38).
- Plaintiff HES describes itself as a "leading supplier of lighting products and control systems for theatrical applications," suggesting the parties are direct competitors in a commercially significant market (Compl. ¶2).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
U.S. Patent No. 6,331,756 Infringement Allegations
| Claim Element (from Independent Claim 14) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A lighting system comprising: a first digital communications system; a first controller connected to the first digital communications system; a second digital communications system; a second controller connected to the second digital communications system | The complaint alleges infringement by systems that use Defendant's products, where the communications systems are technologies like DMX, Wireless DMX, Art-Net, and KlingNet, and their associated controllers. | ¶21 | col. 5:15-30 |
| a plurality of multi-parameter light fixtures interconnected by the first digital communications system and also interconnected by the second digital communications system. | This element is allegedly met when Defendant’s accused light fixtures and/or controllers are used in a system connected to at least two of the aforementioned digital communication networks. | ¶21 | col. 10:1-11 |
Identified Points of Contention
- Scope Questions: Claim 14 recites "a first controller" and "a second controller." A potential dispute may arise over whether this requires two physically separate control consoles or if a single console capable of outputting two different protocols simultaneously could satisfy the limitation. The patent's embodiment in Figure 7 depicts two physically separate controller units (’756 Patent, Fig. 7).
- Technical Questions: This is a system claim. The complaint alleges indirect infringement, suggesting Defendant sells the components (fixtures, controllers) rather than the complete, assembled system (Compl. ¶22). A central question will be whether the use of Defendant’s products by customers necessarily results in the creation of the claimed dual-controller, dual-network system, or if there are substantial non-infringing uses.
U.S. Patent No. 6,459,217 Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A multi-parameter light fixture comprising: a housing; a lamp assembly contained in the housing | The complaint alleges the accused products are multi-parameter light fixtures that include these basic components. | ¶30 | col. 2:1-4 |
| a first digital-communications node contained in the housing and having a first control output coupled to the lamp assembly and a first communications port; and a second digital communications node contained in the housing and having a second communications port | The complaint alleges that each accused fixture contains at least two communication nodes, each connected to a port such as a DMX port or an Art-Net/KlingNet port. | ¶30 | col. 4:40-46 |
| wherein at least one of the first and second digital communications nodes supports bi-directional digital communications. | This limitation is allegedly met by the accused products' use of communication ports (e.g., Art-Net, KlingNet) that support bi-directional communication. | ¶30 | col. 4:49-51 |
Identified Points of Contention
- Scope Questions: The definition of a "digital communications node" may be a point of contention. The defendant could argue that its products use a single, integrated microprocessor to handle multiple communication protocols via different physical ports, which may not constitute two separate "nodes" as contemplated by the patent.
- Technical Questions: What evidence does the complaint provide that the accused products contain two distinct "nodes" beyond the conclusory allegation? The analysis may turn on the specific hardware and software architecture of the accused fixtures—specifically, whether they contain distinct modules for handling different communication protocols or an integrated system.
V. Key Claim Terms for Construction
The Term: "a second controller" (from ’756 Patent, claim 14)
- Context and Importance: The construction of this term is critical for defining the scope of the claimed system. If a single physical console that generates two different control signals (e.g., DMX and Art-Net) is deemed to comprise both "a first controller" and "a second controller," the scope of infringement would be significantly broader than if two physically separate hardware units are required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims do not specify that the controllers must be in separate physical housings. An argument could be made that the term refers to two functional control sources, which could be generated by a single piece of hardware.
- Evidence for a Narrower Interpretation: The specification's primary embodiment illustrating a two-controller system, Figure 7, explicitly depicts two physically distinct units: controller 610 and computer 640, which acts as another controller (’756 Patent, col. 10:1-11; Fig. 7). This may suggest the inventor contemplated physically separate devices.
The Term: "digital communications node" (from ’217 Patent, claim 10)
- Context and Importance: This term's construction will determine whether a light fixture with a single, integrated processing architecture that handles multiple communication protocols infringes. Practitioners may focus on this term because modern electronics often integrate multiple functions onto a single chipset, raising the question of what constitutes a distinct "node."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language defines the node by its function: being contained in the housing, having a control output, and having a communications port. A party could argue that any set of components (hardware and/or software) that performs this function for a given communications protocol constitutes a "node," regardless of physical integration with other components.
- Evidence for a Narrower Interpretation: The specification's Figure 8 depicts two separate "CABLE INTERFACE" blocks (702 and 704) connected to a microprocessor subsystem (’217 Patent, Fig. 8). A party might argue that a "node" comprises, at a minimum, a distinct interface circuit, and that a device using a single integrated circuit to handle multiple protocols does not have two such nodes.
VI. Other Allegations
- Indirect Infringement: For the system claims, the complaint heavily relies on theories of induced and contributory infringement. It alleges Defendant sells the accused products to customers with the knowledge that they will be assembled into infringing systems and provides user manuals and instructions that allegedly encourage such infringing use (Compl. ¶¶22, 39).
- Willful Infringement: Willfulness is alleged for all nine asserted patents. The complaint bases this allegation on Defendant’s alleged pre-suit knowledge of the patents, dating back to at least May 2014 from a draft license agreement, and on continued infringement after the termination of an actual license agreement on or about August 1, 2017 (Compl. ¶¶17, 23, 26, 31, etc.).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of liability for system claims: given that Defendant is alleged to sell individual lighting components, the case may depend on what evidence Plaintiff can produce to show that Defendant is liable for its customers' assembly of the multi-controller, multi-network lighting "systems" claimed in patents like the ’756.
- A key claim construction question will be one of definitional scope: can the term "digital communications node," as used in the '217 and related patents, be construed to cover a single, integrated processor that manages multiple communication protocols, or does the patent require physically or logically distinct hardware modules for each communication port?
- A central question for damages will be the impact of the parties' prior business relationship: how will the alleged history of a license agreement and its subsequent termination influence the court's analysis of willful infringement and the potential for enhanced damages?