DCT

2:24-cv-05409

Dongguan Ingleby v. Aaron Chien

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: Dongguan Ingleby Mechanical Equipment Co., Ltd. v. Chien et al., 2:24-cv-05409, C.D. Cal., 06/26/2024
  • Venue Allegations: Venue is alleged to be proper in the Central District of California because the individual defendants, who are the patent owners, reside in the district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its star light projector products do not infringe and that the asserted patent is invalid, following defendants' infringement assertions through Amazon.com's reporting procedures.
  • Technical Context: The technology involves light projectors, specifically those using LEDs or lasers to create moving or decorative light effects on surfaces like walls and ceilings.
  • Key Procedural History: The lawsuit was precipitated by an infringement claim filed by Defendant Jasco on or around April 29, 2024, through Amazon.com's intellectual property reporting system, which resulted in the removal of the Plaintiff's customer's product listing. The complaint identifies the asserted claims as means-plus-function claims, signaling that claim construction under 35 U.S.C. § 112(f) will be a central issue.

Case Timeline

Date Event
2013-09-11 U.S. Patent No. 9,719,654 Priority Date
2017-08-01 U.S. Patent No. 9,719,654 Issued
2024-04-29 Defendant Jasco allegedly filed patent infringement claim on Amazon
2024-06-26 Complaint for Declaratory Judgment Filed

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

U.S. Patent No. 9,719,654 - "LED AND/OR LASER LIGHT HAS MORE THAN ONE OPTICS MEANS TO CREATE WIDER OR BIG AREAS IMAGE"

The Invention Explained

  • Problem Addressed: The patent background describes existing light projection devices as often being "bulky," "noisy," and not "low cost" (’971 Patent, col. 1:7-9). A further challenge identified is creating moving image effects, which traditionally required motors or other mechanical components (’971 Patent, col. 1:42-53).
  • The Patented Solution: The invention describes a compact light projection device that uses one or more optical elements to create wide-angle images (’971 Patent, Abstract). One described method for creating the appearance of motion is purely electronic, through "sequential flashing, fade-in and fade-out, color changing, sequential, random, or other LED light performances or effects by turning individual LEDs on and off with a time difference, duration, or duty cycle" (’971 Patent, col. 2:1-5).
  • Technical Importance: The invention suggests a method to create simulated motion effects in a light projector without necessarily relying on mechanical motors, potentially reducing cost, noise, and size. (’971 Patent, col. 1:56-64).

Key Claims at a Glance

  • The complaint identifies independent claims 1, 9, and 10 as being at issue (Compl. ¶25).
  • Independent Claim 1, as representative, includes the following essential elements:
    • An LED and/or laser light device having more than one optical element
    • At least one LED and/or laser light
    • Circuitry including means that cause said at least one LED and/or laser light to turn on and off for a predetermined period to provide predetermined functions, colors, and effects
    • The device being a plug-in outlet device, USB device, or AC outdoor lighting device
  • The complaint does not explicitly reserve the right to assert dependent claims but seeks a declaration that its products do not infringe "any claim" of the patent (Compl. ¶40).

III. The Accused Instrumentality

Product Identification

"Ingleby’s star light projector products" ("Accused Product") (Compl. ¶30).

Functionality and Market Context

  • The complaint alleges the Accused Product creates lighting effects by projecting light from a light source through a "rotating filter that is powered by a motor" (Compl. ¶31). The lighting effects are created by patterns on this filter, not by manipulating the light source itself (Compl. ¶31). An annotated photograph in the complaint shows the internal components, identifying the separate "Light Source," "Motor," and "Rotating Filter." (Compl. p. 6).
  • The complaint states that Amazon.com is the "primary sales channel" for these products and that the defendants' infringement claim caused Amazon to remove a product listing, disrupting sales (Compl. ¶37-38).

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. The analysis below summarizes the plaintiff's non-infringement arguments.

’971 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Non-Infringing Functionality Complaint Citation Patent Citation
wherein said at least one LED and/or laser light is connected to a power source by conductors and circuitry including means that cause said at least one LED and/or laser light to turn on and off for a predetermined period to provide predetermined functions, colors, and effects... The Accused Product does not turn its light source on and off to create lighting effects. Instead, it uses a constant light source that projects through a physical rotating filter, which is driven by a motor. The complaint asserts this mechanism is fundamentally different from the claimed means. This is illustrated in a provided diagram showing the distinct motor, filter, and light source components. (Compl. p. 6) ¶31-33 col. 12:21-26
wherein said image includes at least one of a message, lighted pattern, time, geometric art... formed by light beams reflected and/or refracted by one of said optical elements... The complaint alleges that the Accused Product's lighting effects are created by patterns on the rotating filter, not by turning the light source on and off as required by the claims. (Compl. ¶31). ¶31 col. 12:31-41

Identified Points of Contention

  • Scope Questions: The central dispute concerns the "means... to turn on and off" limitation. The complaint argues this is a means-plus-function element governed by 35 U.S.C. § 112(f) (Compl. ¶29). The dispositive question will be whether the Accused Product's motor-driven rotating filter is structurally equivalent to the corresponding structure disclosed in the ’654 Patent for performing the claimed function.
  • Technical Questions: What is the specific structure disclosed in the ’654 patent specification that performs the function of causing the light source to "turn on and off"? The patent describes creating motion effects via "sequential flashing" of LEDs, suggesting an electronic control circuit is the corresponding structure (’971 Patent, col. 2:1-5). The case will require a factual comparison between that disclosed electronic-switching structure and the accused mechanical-filter structure.

V. Key Claim Terms for Construction

  • The Term: "means that cause said at least one LED and/or laser light to turn on and off for a predetermined period to provide predetermined functions, colors, and effects"
  • Context and Importance: This term is the crux of the non-infringement argument. As a means-plus-function limitation, its scope is limited to the corresponding structure described in the specification and its equivalents. The plaintiff's entire non-infringement case rests on the argument that its motor-and-filter assembly is not equivalent to the patent's disclosed structure (Compl. ¶33).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A defendant might argue that the term should be interpreted broadly to cover any mechanism that creates a "turn on and off" effect from the viewer's perspective, even if the light source itself remains constantly powered. The specification mentions using a motor for other purposes, such as moving the optics or light source, which could be argued to provide context for mechanical solutions (’971 Patent, col. 5:13-16).
    • Evidence for a Narrower Interpretation: The plaintiff will argue the patent explicitly defines the structure for creating motion effects without a motor as "turning individual LEDs on and off with a time difference, duration, or duty cycle," which points to electronic circuitry as the only disclosed structure for this specific function (’971 Patent, col. 2:1-5). The complaint emphasizes this distinction, stating the accused product's lighting elements "do not turn on and off" (Compl. ¶32).

VI. Other Allegations

The complaint includes counts for intentional and negligent interference with prospective business relations against the defendants. These counts are based on the allegation that defendants filed a "baseless" and "unjustifiable" infringement claim with Amazon, knowing it would cause the plaintiff's customer's product to be delisted, thereby harming the plaintiff's business relationship with its customer (Compl. ¶52-58, ¶62-65).

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

  1. A question of structural equivalence: The primary issue is whether the accused product's mechanical system—a constant light source, a motor, and a rotating patterned filter—is legally equivalent under 35 U.S.C. § 112(f) to the electronic system disclosed in the ’654 patent, which creates motion effects by sequentially turning LEDs on and off. The outcome of the non-infringement claim hinges on this determination.
  2. A question of claim validity: The complaint raises an indefiniteness challenge based on the use of "conjunctive and disjunctive ('and/or')" language in the claims (Compl. ¶45-47). A key question for the court will be whether this phrasing fails to particularly point out and distinctly claim the invention, rendering the claims invalid under 35 U.S.C. § 112.