DCT
3:23-cv-02045
Fives Investments LLC v. Nanoleaf Canada Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fives Investments, LLC (California)
- Defendant: Nanoleaf Canada Ltd (Canada)
- Plaintiff’s Counsel: FLYER & FLYER, A Professional Law Corporation
- Case Identification: 3:23-cv-02045, S.D. Cal., 11/06/2023
- Venue Allegations: Venue is asserted based on Defendant’s sales and marketing activities over the internet throughout the United States and within the Southern District of California.
- Core Dispute: Plaintiff alleges that Defendant’s "Nanoleaf Canvas" modular lighting products infringe a patent related to smart, multi-dimensional, and wirelessly controllable light cell arrangements.
- Technical Context: The technology at issue falls within the smart home and decorative lighting market, focusing on modular, reconfigurable LED systems that users can control with smart devices.
- Key Procedural History: The patent-in-suit is a continuation-in-part of a prior application, now U.S. Patent No. 8,770,790. The complaint does not mention any other prior litigation, licensing history, or administrative proceedings related to the patent.
Case Timeline
| Date | Event |
|---|---|
| 2012-04-04 | Earliest Priority Date for U.S. Patent No. 9,148,938 |
| 2015-09-29 | U.S. Patent No. 9,148,938 Issued |
| 2023-11-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,148,938 - SMART MULTI-DIMENSIONAL LIGHT CELL ARRANGEMENT
Issued Sep. 29, 2015
The Invention Explained
- Problem Addressed: The patent identifies challenges in creating effective light sources, including difficulties with configuring novel shapes and patterns, achieving easy connectivity between segments, and enabling simple installation and control without extensive peripherals (’938 Patent, col. 2:25-31). The prior art is described as lacking a modular, multi-dimensional light source with unlimited configuration that can be controlled remotely by a smart device (’938 Patent, col. 4:38-52).
- The Patented Solution: The invention proposes a system of individual light cells arranged on a background material, such as flexible tape (’938 Patent, col. 6:28-32). The system is based on a hierarchical architecture of a primary "mother cell" connected to a power source, which in turn powers multiple ancillary "sister cells" (’938 Patent, Abstract; col. 6:25-28, 55-57). Each cell contains its own control module, enabling a user with a smart device to selectively switch individual cells on or off wirelessly (’938 Patent, col. 7:4-7).
- Technical Importance: This approach sought to provide a highly customizable and user-friendly lighting system that avoids complex wiring and hardware, allowing for creative light displays that can be easily reconfigured and controlled (’938 Patent, col. 4:52-62).
Key Claims at a Glance
- The complaint does not identify which specific claims are asserted. The patent contains one independent claim, Claim 1.
- The essential elements of independent Claim 1 are:
- A "primary light cell unit called a mother cell"
- A "plurality of ancillary light cell units called sisters cells"
- A "background holding material"
- A "control module" connected to the mother cell, which includes a "Bluetooth module and a logic module"
- A "control module" connected to the sister cells, which includes a "Bluetooth module and a logic module"
- A "smart device wirelessly connected" to the control modules for selective on/off switching based on user input via a software application
- The mother cell is connected to a power source and adjoining sister cells, with all cells provided on the background material in a "continuous arrangement"
- The complaint does not state whether Plaintiff reserves the right to assert any of the patent's dependent claims.
III. The Accused Instrumentality
Product Identification
The accused product is the "Nanoleaf Canvas" (Compl. ¶11).
Functionality and Market Context
The complaint describes the Nanoleaf Canvas as a system of "Touch-sensitive, modular light squares with edgeless lumination" (Compl. ¶11). These "Square panels connect on all four sides for endless design possibilities," allowing for "totally unique creations" (Compl. p. 4, ¶1-4). The complaint includes a marketing image of the accused Nanoleaf Canvas product, showing interconnected light panels and packaging (Compl. p. 4). The allegations suggest the product's key features are its modularity, reconfigurability, and customizability, which are central to its market position (Compl. ¶11).
IV. Analysis of Infringement Allegations
The complaint alleges direct infringement and infringement under the doctrine of equivalents but does not provide an element-by-element analysis mapping the accused product to any specific claim (Compl. ¶¶13, 17). The following chart summarizes a potential infringement theory for the sole independent claim based on the general allegations and descriptions in the complaint.
'938 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a primary light cell unit called a mother cell; | The complaint does not provide sufficient detail for analysis of this element. | col. 6:25-28 | |
| a plurality of ancillary light cell units called sisters cells; | The system of "modular light squares" that are connected together. | ¶11; p. 4 | col. 6:55-57 |
| a background holding material; | The complaint does not provide sufficient detail for analysis of this element, but the modular nature implies a connection system. | col. 6:28-32 | |
| a control module electrically connected to said mother cell and having a Bluetooth module and a logic module; | The complaint does not provide sufficient detail for analysis of this element. | col. 7:4-7 | |
| a control module electrically connected to said sister cells and having a Bluetooth module and a logic module; | The complaint does not provide sufficient detail for analysis of this element, though wireless control is implied. | col. 7:4-7 | |
| a smart device wirelessly connected to said control modules for selective switching on and off...according to user input received via a mobile software application... | The complaint references wireless control in its description of the patent's invention but does not explicitly allege this functionality in the accused product. | ¶10 | col. 7:22-34 |
| characterized in that the mother cell is electrically connected to an AC or DC electrical power source and to the adjoining sister cells... | The complaint alleges the product consists of modular squares that "connect on all four sides," suggesting electrical connectivity between units. | p. 4, ¶1-2 | col. 6:52-57 |
Identified Points of Contention
- Technical Questions: A primary factual question is whether the Nanoleaf Canvas system utilizes the specific "mother cell" and "sister cell" architecture claimed in the patent. The complaint describes modular squares but provides no evidence that one unit acts as a primary "mother cell" that powers ancillary "sister" units, as opposed to a peer-to-peer connection model. The complaint displays an embodiment of the patented invention from Figure 1 of the '938 Patent, which illustrates this mother/sister cell architecture (Compl. p. 3).
- Scope Questions: The infringement analysis may focus on whether every light panel in the accused product contains its own "control module... having a Bluetooth module and a logic module," as Claim 1 appears to require for both mother and sister cells. A dispute could arise over whether the accused product's control system meets this limitation or uses a centralized controller that does not map onto the claim's distributed architecture.
V. Key Claim Terms for Construction
Term for Construction: "mother cell" / "sister cells"
- Context and Importance: This hierarchical terminology appears to be a defining feature of the claimed invention. The outcome of the case may depend on whether the accused product's architecture can be characterized as having this specific primary/ancillary relationship or if all its modular panels are functional peers.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The terms are not explicitly defined with limiting language, which might permit an argument that any unit receiving primary power and distributing it to others qualifies as a "mother cell."
- Evidence for a Narrower Interpretation: The specification describes the "mother cell" as "the first cell that connects to power source" and states that from it, "electrical power is transferred to the remaining cells called sister cells" (’938 Patent, col. 6:33-35, 55-57). This suggests a specific, hierarchical power-flow structure is an integral part of the definition.
Term for Construction: "a control module electrically connected to said sister cells and having a Bluetooth module and a logic module"
- Context and Importance: Practitioners may focus on this term because Claim 1 recites separate control modules for the mother cell and the sister cells. The infringement case will require determining if the accused product has such a distributed control system or a different configuration (e.g., a single master controller for the entire array).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: An argument could be made that a single controller that manages all "sister cells" meets the limitation of being "a control module electrically connected to said sister cells" (plural).
- Evidence for a Narrower Interpretation: The specification states, "each light cell... is provided with a control module" (’938 Patent, col. 7:17-18). Further, Figure 1 depicts Bluetooth modules (18) on multiple individual sister cells (15), which may support a narrower construction requiring a control module for each cell or a small group of cells.
VI. Other Allegations
- Indirect Infringement: The complaint alleges "DIRECT INFRINGEMENT" and does not plead facts to support claims for induced or contributory infringement (Compl. p. 4).
- Willful Infringement: The complaint makes a conclusory allegation of willful infringement "upon information and belief," without providing a specific factual basis for pre-suit or post-suit knowledge of the patent or infringement (Compl. ¶14).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of architectural equivalence: does the accused Nanoleaf Canvas system, which is described as comprising modular peer-to-peer squares, embody the specific hierarchical "mother cell" and "sister cell" power and control structure required by the patent claims?
- A key evidentiary question will be one of distributed control: what evidence will show that the accused product implements "a control module... having a Bluetooth module and a logic module" for both its primary power-receiving unit and its ancillary units, as recited in Claim 1, versus an alternative control architecture that may not meet the claim limitations?