DCT
2:18-cv-06449
Principal Lighting Group LLC v. Sloan Co Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Principal Lighting Group, LLC (Delaware)
- Defendant: The Sloan Company, Inc. d/b/a/ SloanLED (California)
- Plaintiff’s Counsel: Jackson Walker LLP; Ford, Walker, Haggerty & Behar
- Case Identification: 2:18-cv-06449, C.D. Cal., 09/05/2018
- Venue Allegations: Venue is alleged to be proper in the Central District of California because the Defendant has its principal place of business in the district and has allegedly committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s PrismBEAM line of LED lighting products infringes three patents related to assemblies for retrofitting existing light fixtures, such as those in illuminated signs.
- Technical Context: The technology concerns light-emitting diode (LED) assemblies designed as energy-efficient replacements for older fluorescent or gas-discharge lamps in commercial signage.
- Key Procedural History: The complaint is a First Amended Complaint, filed after an original complaint. Plaintiff notes the pendency of a motion for preliminary injunction based on two of the asserted patents. Post-filing, U.S. Patent No. 9,311,835 was the subject of an Inter Partes Review (IPR2021-00968), which resulted in a certificate issued March 8, 2023, cancelling all claims (1-20) of the patent.
Case Timeline
| Date | Event |
|---|---|
| 2010-11-24 | Earliest Priority Date (’835 Patent) |
| 2013-12-26 | Earliest Priority Date (’054 & ’501 Patents) |
| 2016-04-12 | ’835 Patent Issued |
| 2017-12-26 | ’054 Patent Issued |
| 2018-02-12 | Plaintiff sends notice letter to Defendant regarding ’054 Patent |
| 2018-07-17 | ’501 Patent Issued |
| 2018-07-26 | Original Complaint Filed |
| 2018-07-31 | Defendant allegedly receives notice of ’835 Patent infringement |
| 2018-08-01 | Defendant allegedly changes website to market "retrofit" PrismBEAM |
| 2018-09-05 | First Amended Complaint Filed |
| 2023-03-08 | IPR Certificate issues cancelling all claims of the ’835 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,851,054 - "Universal Lamp Support," issued December 26, 2017
The Invention Explained
- Problem Addressed: The patent describes the difficulty of retrofitting existing light fixtures, particularly in elevated signs, with modern LED lighting. Prior art solutions were often cumbersome, required multiple components like separate end caps or mounting bases, and necessitated modification of the existing fixture ('054 Patent, col. 1:35-42, col. 2:1-12).
- The Patented Solution: The invention is a "monolithic" or single, unitary extruded support structure for LEDs. The ends of this single piece are designed to fit directly into the existing sockets (e.g., T-12 fluorescent sockets) for mechanical support, eliminating the need for separate adapters or end caps. The LEDs on the support are powered by an independent electrical source, not through the old socket's wiring ('054 Patent, Abstract; col. 3:3-14).
- Technical Importance: This approach is presented as a way to make retrofitting signs with energy-efficient LEDs faster and easier by using a lightweight, single-piece assembly that leverages the existing mechanical structure without modification ('054 Patent, col. 2:7-12).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶16).
- The essential elements of claim 1 include:
- An apparatus with a lamp support comprising an elongated extrusion with four sides and a hollow core.
- Each end of the extrusion is configured to fit securely within the recess of a recessed double contact socket.
- A protruding contact structure from the socket's recess is received within the hollow core of the extrusion.
- One or more LED strings are affixed to the extrusion's side(s).
- Each LED string has one or more LEDs and wiring to connect them to a power source that is not connected to the protruding contact from the socket.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 10,024,501 - "Universal Lamp Support," issued July 17, 2018
The Invention Explained
- Problem Addressed: As a continuation of the '054 Patent, this patent addresses the same technical problem: simplifying the process of replacing fluorescent lamps with LEDs in existing sign fixtures by avoiding complex, multi-part solutions or fixture modifications ('501 Patent, col. 1:33-55).
- The Patented Solution: The invention is again described as an extruded "monolithic substrate" that serves as a support for LEDs. The ends of the substrate are designed to fit directly into existing lamp sockets, using them for mechanical support only. The abstract highlights that the design renders "end caps or end socket adapters unnecessary" ('501 Patent, Abstract; col. 2:56-62).
- Technical Importance: The technology aims to reduce the cost and labor involved in large-scale lighting retrofits by providing a simple, drop-in replacement that works regardless of the original socket's orientation ('501 Patent, col. 2:1-12).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶32).
- The essential elements of claim 1 include:
- A lamp apparatus comprising a monolithic support.
- The support includes an end configured to receive a protruding contact that protrudes from a recessed lamp socket.
- One or more LED strings are affixed to the monolithic support.
- Each string includes one or more LEDs and circuitry to couple the LEDs to a power source that is not electrically coupled to the protruding contact.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
Multi-Patent Capsule: U.S. Patent No. 9,311,835
- Patent Identification: U.S. Patent No. 9,311,835, "Lighting Mount For Interior-Lighted Signage And Method Of Retrofitting A Lighted Sign," issued April 12, 2016.
- Technology Synopsis: This patent discloses a lamp support assembly for retrofitting signs that includes an elongate support member and a pair of separate end caps. The end caps are configured to frictionally engage the ends of the support member, and an outward-facing side of each end cap has a mechanical coupling element designed to engage a standard mount for a gas-discharge lamp. This design contrasts with the "monolithic" structures of the '054 and '501 patents by explicitly using separate end caps ('835 Patent, Abstract; col. 1:51-65).
- Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶45).
- Accused Features: The complaint accuses a "retrofit" version of the Defendant's PrismBEAM product, which allegedly incorporates an "end cap design" that "perfectly matches T-12 sockets" (Compl. ¶¶46, 47). An annotated image in the complaint, "Image 5," depicts what is alleged to be the end cap on the accused product (Compl. p. 20).
III. The Accused Instrumentality
Product Identification
- The SloanLED PrismBEAM product line, specifically including an "original" version and a "retrofit" PrismBEAM version with end caps (Compl. ¶¶17, 46).
Functionality and Market Context
- The PrismBEAM is described as a "cost-effective, lens based LED lighting solution designed to replace existing T12 fluorescent lamps" in sign cabinets (Compl. ¶6). The complaint alleges the product consists of an elongated support with LED strings affixed to its sides (Compl. p. 7-8). The "retrofit" version is alleged to have been introduced around August 1, 2018, and is distinguished by the addition of end caps designed for "optimum fit and stability" in T-12 sockets (Compl. ¶¶22, 46). The products are marketed to sign makers as providing "fast, easy installation" (Compl. ¶24).
IV. Analysis of Infringement Allegations
’054 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a lamp support comprising an elongated extrusion including four sides enclosing a hollow core extending from a first end... to a second end | The accused PrismBEAM product is alleged to be a lamp support (element a) with an extended extrusion (element b) having four sides (element c) and a hollow core (element d). A photograph of the accused product is provided to show these features. | ¶18 (p. 7) | col. 4:22-26 |
| wherein each end of the elongated extrusion is configured to fit securely within a recess of a recessed double contact socket | The complaint alleges that the ends of the PrismBEAM extrusion are configured to fit into a recessed double contact socket. A photograph, Image 3, shows the type of socket at issue. | ¶18 (p. 8) | col. 4:36-41 |
| wherein a protruding contact structure, which protrudes from the recess, is received within the hollow core of the elongated extrusion | The complaint does not specifically map this element in its chart but implies it by alleging the extrusion fits into the socket. The patented invention describes this interaction as key to its function. | ¶18 | col. 4:36-41 |
| one or more light emitting diode (LED) strings, affixed to one or more of the four sides of the elongated extrusion | The PrismBEAM product is alleged to have LED strings (element f) affixed to one or more sides of its elongated extrusion. This is shown in an annotated product photograph, Image 1. | ¶18 (p. 8) | col. 4:50-53 |
| wherein each LED string includes: one or more LEDs; and | The PrismBEAM is alleged to comprise one or more LEDs (element g). | ¶18 (p. 8) | col. 4:56-60 |
| wiring suitable for connecting the one or more LEDs to a power source not connected to the protruding contact, thereby enabling powering of the LED string independently of the protruding contact. | The PrismBEAM is alleged to have wiring (element h) to connect the LEDs to an independent power source. | ¶18 (p. 8) | col. 4:45-48 |
’501 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a monolithic support including an end configured to receive a protruding contact protruding from a recessed lamp socket | The accused PrismBEAM is alleged to be a monolithic support (element b) where at least one end (element d) is configured to receive a protruding contact from a recessed socket. An annotated photograph, Image 2, is used to identify this feature. | ¶34 (p. 14) | col. 8:36-40 |
| one or more light emitting diode (LED) strings, affixed to the monolithic support, wherein each of the one or more LED strings includes: | The PrismBEAM product is alleged to have LED strings (element f) affixed to its monolithic support (element b). | ¶34 (p. 15) | col. 8:40-42 |
| one or more LEDs; and | The PrismBEAM is alleged to include one or more LEDs (element g). | ¶34 (p. 15) | col. 8:43-44 |
| circuitry configured to couple the one or more LEDs to a power source not electrically coupled to the protruding contact. | The PrismBEAM is alleged to have circuitry (element h) to connect the LEDs to a power source not electrically coupled to the socket's protruding contact. The complaint cites an installation guide diagram instructing users "Do not connect power to lamp sockets." | ¶34 (p. 15-16) | col. 8:45-48 |
- Identified Points of Contention:
- Scope Questions: A primary question for the '054 and '501 patents is whether the term "monolithic support" or an "elongated extrusion" whose ends are configured to fit in a socket can read on a product that was allegedly redesigned to include separate end caps. The complaint appears to structure its allegations around this product evolution, accusing the "original" product under the '054/'501 patents and the "retrofit" product with end caps under the '835 patent.
- Technical Questions: A factual dispute may arise over whether the accused "original" PrismBEAM product's extrusion is, in fact, "configured to fit securely" into a socket and "receive a protruding contact structure" within its hollow core, as claimed in the '054 and '501 patents, without any intermediary component. The complaint's photographic evidence (Compl. p. 7, Image 2) will be central to resolving this question.
V. Key Claim Terms for Construction
- The Term: "monolithic support" (from '501 claim 1) / "elongated extrusion" (from '054 claim 1)
- Context and Importance: The construction of this term is critical because both the '054 and '501 patents distinguish themselves from prior art by eliminating the need for separate "end caps or end socket adapters" ('501 Patent, Abstract). Practitioners may focus on this term because the infringement case for the '054 and '501 patents appears to depend on the accused product being a single, unitary piece, whereas the case for the '835 patent depends on the product having separate end caps.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The body of claim 1 in both patents does not explicitly state "comprising only a single piece" or "devoid of end caps." A party could argue that "monolithic" refers to the main support body, without precluding the addition of non-essential, separate components.
- Evidence for a Narrower Interpretation: The specification of the '054 patent states, "The monolithic substrate of the invention is a unitary piece and functions without the use of end caps or end socket adapters" ('054 Patent, col. 3:31-35). Similarly, the '501 patent abstract states the design renders "end caps or end socket adapters unnecessary." This language suggests the term was intended to mean a single, continuous, unitary structure that does not rely on separate, attachable components for mounting.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by asserting that Defendant's data sheets and installation guides instruct and encourage customers and distributors to install and use the PrismBEAM products in an infringing manner (Compl. ¶¶24, 36-37). For the '501 patent, the complaint provides a visual from the installation guide explicitly instructing users "Do not connect power to lamp sockets," which directly maps to a claim limitation (Compl. p. 16). The complaint also pleads contributory infringement, alleging the accused products are especially made for infringing use and are not capable of substantial non-infringing uses (Compl. ¶¶25, 38, 51).
- Willful Infringement: Willfulness is alleged based on pre-suit and post-suit knowledge. The complaint alleges Defendant had notice of the '054 patent via a letter dated February 12, 2018 (Compl. ¶19). It further alleges notice of the '501 and '835 patents occurred upon the filing of related court documents on July 26, 2018, and July 31, 2018, respectively (Compl. ¶¶35, 48). Continued infringement after these dates is alleged to be willful and deliberate.
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold issue for the infringement claim on the ’835 patent is its legal enforceability. An Inter Partes Review certificate issued after the complaint was filed indicates that all claims of the '835 patent, including the one asserted, have been cancelled, which raises a significant question about the viability of Count III of the complaint.
- The dispute over the ’054 and ’501 patents will likely center on a question of definitional scope: does the term "monolithic support" (or an "elongated extrusion" whose end fits in a socket), which the patents define in contrast to prior art with separate end caps, read on the "original" version of the accused PrismBEAM product? The resolution will depend on whether the accused product is found to be a single, unitary structure as contemplated by the patents.
- A core evidentiary question will be one of technical fact: did the Defendant's "original" PrismBEAM product physically operate as claimed, with the ends of its extrusion fitting directly and securely into T-12 sockets and receiving the sockets' protruding contacts? The photographic and product evidence presented to the court will be determinative on this point.