DCT
1:17-cv-01120
Shenzhen El Lighting Technology Co Ltd v. Midwest Trading Group Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shenzhen EL Lighting Technology Co., LTD (Shenzhen, China)
- Defendant: Midwest Trading Group, Inc. (Illinois)
- Plaintiff’s Counsel: Bradford, LTD
- Case Identification: 1:17-cv-01120, D. Colo., 05/05/2017
- Venue Allegations: Venue is alleged to be proper in the District of Colorado based on Defendant's alleged acts of infringement and business dealings within the state.
- Core Dispute: Plaintiff alleges that Defendant’s "LIGHT-UP" branded electroluminescent charging cables infringe a patent related to the structure and material composition of electroluminescent wire.
- Technical Context: The technology concerns electroluminescent (EL) wires, commonly used in decorative lighting and consumer electronics accessories, which emit light along their length when an electric current is applied.
- Key Procedural History: The complaint alleges that Defendant is selling products manufactured by Power4, a company that previously had a manufacturing agreement with Plaintiff to produce Plaintiff's own patented products. This agreement allegedly terminated in 2015, two years prior to the alleged start of Defendant's infringement. Plaintiff also alleges it has consistently marked its products with the patent number since 2005.
Case Timeline
| Date | Event |
|---|---|
| 2003-01-09 | '725 Patent Priority Date |
| 2005-11-01 | '725 Patent Issue Date |
| 2013-XX-XX | Plaintiff enters manufacturing agreement with Power4 |
| 2015-XX-XX | Manufacturing agreement with Power4 terminates |
| 2017-03-XX | Defendant allegedly begins selling accused "LIGHT-UP" products |
| 2017-05-05 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 6,960,725, Electroluminescence (EL) Tube and Wire and Manufacturing Method, issued November 1, 2005.
The Invention Explained
- Problem Addressed: The patent's background section describes prior art EL wires as having complicated and costly manufacturing processes, which resulted in "bad luminescent quality and effect" due to structural issues like pores in the wire's layers that could reduce field capacitance (’725 Patent, col. 1:20-36).
- The Patented Solution: The invention claims to solve this by creating a wire with a simpler, more robust layered structure. A central electrode is coated with a luminescent layer composed of luminescent powder mixed directly with a transparent thermoplastic or synthetic resin. This mixture acts as both the light-emitting medium and an insulating binder, which the patent suggests can "form an insulating capsule outside the particles of luminescent powder," thereby simplifying the manufacturing process and reducing cost (’725 Patent, col. 2:1-6, Abstract). This core is then surrounded by a transparent electrode layer and fine conductive wires that serve as an accessory electrode (’725 Patent, Fig. 1).
- Technical Importance: This approach sought to create EL wires with a "simple structure and manufacturing techniques, low cost, stable luminescent effect, and reliable quality" compared to conventional methods (’725 Patent, col. 2:39-43).
Key Claims at a Glance
- The complaint asserts independent Claim 1, which is the only claim in the patent (Compl. ¶¶ 21, 31).
- The essential elements of Claim 1 include:
- An electroluminescence wire core with a flexible central electrode, a luminescent layer, and a transparent/conductive layer.
- The luminescent layer contains luminescent powder covered by a transparent, insulating, and dielectric thermoplastic macromolecular polymer and synthetic resin.
- At least two fine conductive wires wind around the transparent and conductive layer.
- A specific list of materials the thermoplastic macromolecular polymer includes (e.g., polyvinyl chloride, polypropylene).
- A specific list of materials the synthetic resin includes (e.g., organic silicon resin, polyurethane).
- A specific list of materials the luminescent powder is made from (e.g., copper and zinc sulfide).
- A specific structure for the central electrode, which "involves single non-metal wire, multiple non-metals wires which are adhered together using conductive adhesive, conductive flexible tube and weaved tube made from metal and non-metal material."
III. The Accused Instrumentality
Product Identification
The accused products are Defendant's "PowerXcel™ LIGHT-UP" cables, including micro-USB and 8-pin/Lightning to USB cables with specific product numbers #723080, #722173, #722116, #727529, and #727511 (Compl. ¶19).
Functionality and Market Context
The products are consumer electronic accessories for charging and data synchronization that feature electroluminescence, causing the cable to visibly light up (Compl. p. 3). The complaint alleges these products are sold through retailers such as CVS Pharmacy (Compl. ¶19). It further alleges that the accused products are "a direct copy of the LIGHT PULSE products manufactured by EL Lighting" and are manufactured by Plaintiff's former partner, Power4 (Compl. ¶¶ 20, 22). The complaint provides a marketing image of Plaintiff's own "LIGHT PULSE" cables, which it alleges are directly copied by Defendant, showing various connectors and the glowing cable effect (Compl. p. 3).
IV. Analysis of Infringement Allegations
’971 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An electro luminescence wire core comprising a flexible central electrode, luminescent layer, and a transparent and conductive layer... | The accused products are alleged to contain an electroluminescence wire core with these three constituent layers (Compl. ¶34a). | ¶34a | col. 6:18-21 |
| in the transparent and conductive layer are disposed luminescent powder which is covered by thermoplastic macromolecular polymer and synthetic resin, the thermoplastic macromolecular polymer and the synthetic resin are transparent, insulating, and dielectric... | Plaintiff alleges, based on inspection, that the accused cables contain a luminescent powder covered by a transparent thermoplastic polymer and synthetic resin, and that these materials are transparent, insulated, and dielectric (Compl. ¶21b-c). | ¶21b-c | col. 6:23-28 |
| at least two fine conductive wires wind around the transparent and conductive layer | The accused products allegedly have "at least two fine conductive wires that wind around the transparent and conductive layer" (Compl. ¶21d). | ¶21d | col. 6:28-29 |
| the thermoplastic macromolecular polymer includes polyvinyl chloride, polyethylene terephthalate, polypropylene, polystyrene, polysulfone, and polycarbonate... | Based on inspection, the complaint asserts the thermoplastic polymer in the accused products includes these specific materials (Compl. ¶21e). | ¶21e | col. 6:29-34 |
| the synthetic resin includes organic silicon resin, polyurethane, polyester resin, acrylic resin, and epoxy resin | The complaint asserts the synthetic resin in the accused products includes these specific materials (Compl. ¶21f). | ¶21f | col. 6:34-37 |
| the luminescent powder in the luminescent layer is made from a mixture of copper and zinc sulfide and organic substances including poly-alkylthrophene, paraphenylethyne, and poly-alkylfluorene | The complaint alleges the luminescent powder in the accused products is made of this specified mixture of materials (Compl. ¶21g). | ¶21g | col. 6:38-42 |
| the central electrode involves single non-metal wire, multiple non-metals wires which are adhered together using conductive adhesive, conductive flexible tube and weaved tube made from metal and non-metal material | The accused product’s central electrode is alleged to be a non-metal wire structure involving adhered wires and tubes made from metal and non-metal material (Compl. ¶21h). | ¶21h | col. 6:43-47 |
Identified Points of Contention
- Scope Questions: The claim recites highly specific lists of materials for the polymer, resin, and luminescent powder. A central dispute will be whether the materials in the accused cables fall within these "Markush" style groups. The complaint's allegations of infringement for these elements are based on "actual inspection by EL Lighting's engineers," which suggests this will be a fact-intensive dispute requiring discovery and expert analysis (Compl. ¶21).
- Technical Questions: The final limitation describing the "central electrode" is structurally complex and uses the ambiguous term "involves." A key question will be what structural features are actually required to meet this limitation. The court will need to determine whether the electrode must contain all of the listed sub-components (a single wire, multiple wires, a tube, etc.) or if the presence of one or more is sufficient.
V. Key Claim Terms for Construction
The Term: "...thermoplastic macromolecular polymer includes..." and "...synthetic resin includes..."
- Context and Importance: These limitations define the required chemical composition of key layers in the wire. Practitioners may focus on these terms because the claim's validity and the infringement analysis hinge on whether the accused products use materials from the specific, closed lists that follow. The construction of "includes" in this context will determine if the lists are merely exemplary or are exhaustive.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that "includes" is a transitional term of art that is generally open-ended, meaning other unlisted materials could also be present.
- Evidence for a Narrower Interpretation: The structure of the claim, which recites a specific list of compounds, strongly suggests a "Markush group," where the term "includes" is interpreted to mean "is selected from the group consisting of." The patent specification describes embodiments using these materials but does not appear to provide explicit support for materials outside these lists (’725 Patent, col. 4:39-57).
The Term: "the central electrode involves single non-metal wire, multiple non-metals wires which are adhered together using conductive adhesive, conductive flexible tube and weaved tube made from metal and non-metal material."
- Context and Importance: The structure of the central electrode is a core element of the claim, and the term "involves" is not a standard patent law term of art like "comprising" or "consisting of." Its definition is critical, as a broad reading would make infringement easier to prove, while a narrow one would create a high evidentiary bar.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that "involves" should be read broadly to mean "is one of" or "is characterized by," such that an electrode meeting any one of the listed descriptions (e.g., being a "single non-metal wire") would satisfy the limitation. The specification discloses several different electrode embodiments, such as a simple conductive wire (Fig. 1), a flexible tube (Fig. 3), and twisted non-metal wires (Fig. 5), which could support an argument that the claim language was intended to encompass these alternatives (’725 Patent, col. 4:5-32).
- Evidence for a Narrower Interpretation: Defendant may argue that "involves" requires the presence of all, or at least a combination, of the listed features, making it a conjunctive list. The phrasing "single non-metal wire, multiple non-metals wires..." could be read as requiring a composite structure.
VI. Other Allegations
Indirect Infringement
The complaint does not contain specific counts for induced or contributory infringement.
Willful Infringement
The complaint alleges that infringement is "deliberate, willful, and intentional and with full knowledge of the existence and validity of the '725 Patent" (Compl. ¶36). The factual basis appears to rest on two main allegations: (1) Plaintiff's consistent marking of its own products with the patent number, which may constitute constructive notice (Compl. ¶35); and (2) the allegation that Defendant's products are sourced from Plaintiff's former manufacturing partner, Power4, who had direct knowledge of the patent through a prior business relationship (Compl. ¶¶ 13-20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof versus claim scope: Given the claim’s recitation of specific chemical compounds for its polymer and resin layers, can Plaintiff produce sufficient evidence from discovery or reverse engineering to prove that the accused "LIGHT-UP" cables are made with the exact materials required by the patent?
- A dispositive issue will be one of claim construction: How will the court interpret the ambiguous phrase "the central electrode involves...," which recites a long list of structural characteristics? Whether this requires all listed features to be present, or only one, will fundamentally alter the scope of the patent and likely determine the outcome of the infringement analysis.
- A key question for damages will be willfulness: Does the complaint's narrative—alleging Defendant is sourcing its products from Plaintiff's former manufacturer who had knowledge of the patent—plausibly support a claim for willful infringement, potentially exposing Defendant to enhanced damages?