Lutron Electronics Co Inc v. Legrand North America LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Lutron Electronics Co., Inc. (Pennsylvania)
  • Defendant: Legrand North America, LLC, et al. (Delaware, New York, California, Florida)
  • Plaintiff’s Counsel: Izard, Kindall & Raabe, LLP; Carter Scholer, PLLC; Arnold & Porter Kaye Scholer LLP
• Case Identification: 3:17-cv-01412, D. Conn., 08/21/2017
• Venue Allegations: Venue is alleged based on Defendant Legrand North America, LLC, having its principal place of business and headquarters in West Hartford, Connecticut, constituting a regular and established place of business within the district.
• Core Dispute: Plaintiff alleges that Defendant’s dimmer switches, remote controls, and wireless control systems for lighting and shades infringe six patents related to lighting control, system configuration, and remote control design.
• Technical Context: The dispute centers on technologies for controlling residential and commercial lighting systems, including methods for automatically adapting dimmer switches to different types of lamps and for managing commands within a wireless control network.
• Key Procedural History: The complaint alleges that Plaintiff has previously sued Defendant for patent infringement, suggesting Defendant was aware of Plaintiff’s patent portfolio prior to this lawsuit.

Case Timeline

Date	Event
2002-09-16	U.S. Patent No. 6,803,728 Priority Date
2004-10-12	U.S. Patent No. 6,803,728 Issues
2004-07-15	U.S. Patent No. 7,663,325 Priority Date
2007-10-31	U.S. Patent Nos. 8,242,714 & 8,704,459 Priority Date
2008-04-04	U.S. Patent Nos. 9,024,800 & 9,361,790 Priority Date
2010-02-16	U.S. Patent No. 7,663,325 Issues
2012-08-14	U.S. Patent No. 8,242,714 Issues
2014-04-22	U.S. Patent No. 8,704,459 Issues
2015-05-05	U.S. Patent No. 9,024,800 Issues
2015-12-18	Press release announces Legrand’s acquisition of QMotion
2016-06-07	U.S. Patent No. 9,361,790 Issues
2017-06-19	Press release refers to QMotion as “a brand of Legrand”
2017-08-21	Complaint Filed

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

U.S. Patent No. 8,242,714 - "Two-Wire Dimmer Circuit for a Screw-In Compact Fluorescent Lamp"

• Issued: August 14, 2012

The Invention Explained

• Problem Addressed: The patent describes issues that arise when a dimmer designed for incandescent lamps is used with a screw-in compact fluorescent lamp (CFL). Specifically, a dimmer’s semiconductor switch (triac) may fire multiple times in a single AC half-cycle when connected to a CFL, causing flickering, noise, and stress on the components (’714 Patent, col. 3:20-48).
• The Patented Solution: The invention is a dimmer switch that can automatically adapt its dimming range for different types of lamps. It includes a sensing circuit that measures an electrical characteristic (like voltage or current) at its output terminal and a controller that uses this information to automatically adjust the low-end of the dimming range, thereby ensuring stable operation with various loads, including CFLs (’714 Patent, col. 4:56-6:5; Fig. 15).
• Technical Importance: This technology aims to provide a "universal" dimmer that can reliably control both traditional incandescent bulbs and newer, more efficient CFLs without manual reconfiguration by the user (’714 Patent, Abstract).

Key Claims at a Glance

• The complaint asserts independent claim 25.
• Claim 25 of the ’714 Patent requires, in essence:
  • A dimmer switch for controlling a lighting load within a dynamic range having a high-end and low-end intensity setting.
  • A controllably conductive switching device to control power delivery.
  • A controller to make the switching device conductive for a portion of each AC half-cycle.
  • A sensing circuit to sense an electrical characteristic at the dimmer’s second terminal and provide a control signal to the controller.
  • The controller is operable to automatically adjust the low-end intensity setting to one of at least two different values in response to the control signal from the sensing circuit.

U.S. Patent No. 8,704,459 - "Two-Wire Dimmer Circuit for a Screw-In Compact Fluorescent Lamp"

• Issued: April 22, 2014

The Invention Explained

• Problem Addressed: This patent, from the same family as the ’714 Patent, also addresses the operational incompatibilities between standard dimmers and CFLs, particularly the risk of the dimmer's switching device failing to latch or hold a conductive state, leading to inconsistent performance (’459 Patent, col. 3:19-48).
• The Patented Solution: The invention describes a method where the dimmer’s controller automatically determines if its switching device is successfully conducting current to the lamp at a specific, predetermined time after it has been instructed to turn on. Based on this determination (i.e., whether current is flowing or not), the controller adjusts the low-end intensity setting, thereby setting a dimming range appropriate for the connected lamp type (’459 Patent, col. 4:55-6:3; Fig. 21).
• Technical Importance: This solution provides an alternative automatic detection mechanism to distinguish between different lamp types (like incandescent vs. CFL) and adjust dimmer parameters accordingly for stable operation (’459 Patent, Abstract).

Key Claims at a Glance

• The complaint asserts independent claim 17.

• Claim 17 of the ’459 Patent requires, in essence:

  • A method of controlling a dimmer switch coupled to a lighting load.
  • Rendering a controllably conductive switching device conductive after a zero crossing of the AC voltage.
  • Automatically determining if the switching device is conducting a load current to the lighting load at a predetermined time after being rendered conductive.
  • Automatically adjusting the low-end intensity setting from a first value to a second value in response to this determination.

• Multi-Patent Capsule: U.S. Patent No. 6,803,728, “System for Control of Devices,” issued October 12, 2004.

  • Technology Synopsis: The patent describes a wireless control system with a central processor, event initiators (e.g., keypads), and controlled devices (e.g., dimmers). To minimize network traffic and ensure efficient operation, the system database is distributed across the components, and commands are mapped to device actions using a protocol where the transmitted commands contain less data than is necessary to fully describe the resulting action (’728 Patent, col. 2:35-49).
  • Asserted Claims: Claims 1 and 21 (both independent).
  • Accused Features: The complaint alleges that Legrand’s systems, including QMotion remotes, Range Extenders, and Zigbee shades, use a similar distributed database and command mapping structure (Compl. ¶¶ 37-44).

• Multi-Patent Capsule: U.S. Patent No. 7,663,325, “Programmable Wallbox Dimmer,” issued February 16, 2010.

  • Technology Synopsis: This patent discloses a wallbox dimmer with two distinct modes: a normal operational mode and a programming mode. In normal mode, a display (e.g., LEDs) indicates the current light intensity. In programming mode, the same display is repurposed to provide user-perceptible feedback for configuring various programmable features of the dimmer (’325 Patent, Abstract).
  • Asserted Claims: Claim 5 (independent).
  • Accused Features: The complaint alleges that Legrand’s adorne and Radiant line dimmers have both a normal operational mode and a programming mode where an intensity level display is used to indicate programmable feature values (Compl. ¶¶ 45-49).

• Multi-Patent Capsule: U.S. Patent No. 9,024,800, “Wireless Battery-Powered Remote Control Having Multiple Mounting Means,” issued May 5, 2015.

  • Technology Synopsis: The patent describes a wireless remote control designed to fit within a standard "Decora" style wallplate opening. The remote's housing has an outer periphery slightly smaller than the standard opening, allowing it to be mounted on a wall and appear like a traditional wall-mounted control, while also being configured to function as a handheld device (’800 Patent, Abstract).
  • Asserted Claims: Claim 13 (independent).
  • Accused Features: The complaint alleges that Legrand’s QMotion remotes are designed with a rectangular outer periphery slightly smaller than a standard Decora opening, allowing them to be mounted in a faceplate on a wall and also function as handheld devices (Compl. ¶¶ 50-59).

• Multi-Patent Capsule: U.S. Patent No. 9,361,790, “Remote Control for a Wireless Load Control System,” issued June 7, 2016.

  • Technology Synopsis: This patent, related to the ’800 patent, also describes a remote control designed to fit into a standard Decora-style opening in a faceplate. A key feature is that the remote is configured to be unmounted from the wall and removed from the opening, allowing it to function both when mounted and when unmounted as a handheld device (’790 Patent, Abstract).
  • Asserted Claims: Claim 23 (independent).
  • Accused Features: The complaint alleges that Legrand’s QMotion remotes are configured to be mounted in a standard opening, unmounted from the wall, and function in both states (Compl. ¶¶ 60-69).

III. The Accused Instrumentality

Product Identification

• The complaint accuses multiple product lines, grouped by the patents they allegedly infringe (Compl. ¶¶ 26, 32, 37, 45, 50, 60).
  • Accused Dimmers: Products from the Legrand "adorne," "Radiant," and "Harmony" lines (e.g., ADTP703TU, RH703PTU) are accused of infringing the ’714 and ’459 patents. Other dimmers from the "adorne" and "Radiant" lines (e.g., ADWR700RMTU, LC2101) are accused of infringing the ’325 patent.
  • Accused Systems: Systems comprising QMotion remotes (e.g., Zigbee Multi Channel Remote), a QMotion Range Extender, and controlled devices like Zigbee shades are accused of infringing the ’728 patent.
  • Accused Remotes: QMotion remotes (e.g., Gen 3 Single Channel Remote, ZigBee Multi Channel Remote) are accused of infringing the ’800 and ’790 patents.

Functionality and Market Context

• The accused dimmers are alleged to be two-wire devices that control lighting intensity by adjusting power from an AC source (Compl. ¶¶ 27-28). The complaint alleges these dimmers include circuitry to sense electrical characteristics of the attached lamp and automatically adjust their dimming range (Compl. ¶¶ 30-31, 35-36).
• The accused systems are alleged to employ a distributed command structure where a remote sends a first command to a central processor (the Range Extender), which in turn sends a second command to a controlled device (the shades), with the commands containing less data than necessary to fully describe the final action (Compl. ¶¶ 38-44).
• The accused remotes are alleged to be battery-powered wireless devices designed with a specific rectangular shape and size to fit within standard "Decora" wallplate openings, enabling them to function as both handheld and wall-mounted controls (Compl. ¶¶ 51-52, 61-62).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,242,714 Infringement Allegations

Claim Element (from Independent Claim 25)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A dimmer switch adapted to be coupled between an AC power source at a first terminal and a lighting load at a second terminal for controlling the intensity of the lighting load within a dynamic range comprising a high-end intensity setting and a low-end intensity setting...	The Accused ’714 Dimmers are adapted to connect between an AC power source and a lighting load to control intensity within a dynamic range that includes high- and low-end settings.	¶27	col. 1:26-34
...a controllably conductive switching device adapted to be coupled in series electrical connection between the first and second terminals for controlling the amount of power delivered to the lighting load;	The Accused ’714 Dimmers include a controllably conductive switching device in series connection between their terminals to control power delivery.	¶28	col. 1:35-39
...a controller coupled to a control input of the controllably conductive switching device for controlling the controllably conductive switching device to be conductive for a conduction interval each half cycle of the AC power source;	The Accused ’714 Dimmers include a controller that controls the switching device, making it conductive for a portion of each AC half-cycle.	¶29	col. 1:40-44
...a sensing circuit coupled such that the sensing circuit is operable to sense an electrical characteristic of the second terminal...and adapted to provide a control signal representative of the electrical characteristic to the controller;	The Accused ’714 Dimmers include a sensing circuit that senses an electrical characteristic like current or voltage and provides a representative control signal to the controller.	¶30	col. 1:45-50
...the controller operable to automatically adjust the low-end intensity setting to one of a first low-end intensity setting value and a second low-end intensity setting value in response to the control signal from the sensing circuit.	The controller in the Accused ’714 Dimmers automatically adjusts the low-end intensity setting between at least two different values based on the signal from the sensing circuit.	¶31	col. 1:51-55

• Identified Points of Contention:
  • Scope Questions: The title and background of the ’714 Patent focus heavily on solving problems specific to screw-in CFLs. A potential question is whether the claims, when properly construed in light of the specification, are limited to devices specifically addressing CFL-related issues or if they read on general-purpose dimmers that perform any form of automatic load detection and adjustment.
  • Technical Questions: The complaint alleges the accused dimmers "automatically adjust the low-end intensity setting." A key factual question will be what specific technical process this entails in the accused products and whether that process aligns with the method described in the patent, which involves a specific feedback loop from a sensing circuit for the purpose of setting the dimming range.

U.S. Patent No. 8,704,459 Infringement Allegations

Claim Element (from Independent Claim 17)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A method of controlling the intensity of a lighting load...the method comprising: rendering a controllably conductive switching device...conductive in a half cycle of the AC line voltage after an AC line voltage zero crossing;	The Accused '459 Dimmers include a controllably conductive switching device that is made conductive after a zero crossing in each AC half cycle.	¶34	col. 4:58-61
...automatically determining if the controllably conductive switching device is conducting a load current to the lighting load at a predetermined time after the controllably conductive switching device is rendered conductive...	The Accused '459 Dimmers automatically determine if the switching device is conducting current at a predetermined time after it is rendered conductive.	¶35	col. 4:62-65
...automatically adjusting the low-end intensity setting, in response to [the determining step], from a first low-end intensity setting value to a second low-end intensity setting value, thereby setting a dimming range...	The Accused '459 Dimmers automatically adjust the low-end intensity setting between two values in response to the determination of whether the device is conducting load current.	¶36	col. 4:66-5:3

• Identified Points of Contention:
  • Scope Questions: Similar to the ’714 patent, a potential dispute may arise over whether claim 17 is limited to the context of CFL detection described in the specification or covers any dimmer that performs a current-sensing check for any purpose.
  • Technical Questions: The infringement allegation hinges on the accused dimmers performing a current check "at a predetermined time" after the switch is activated. A central technical question will be whether the accused products actually perform this specific, timed check as part of a load-type detection scheme, or if they employ a different mechanism for ensuring stable operation that does not meet this claim limitation. The complaint provides no detail on what this "predetermined time" is for the accused products.

V. Key Claim Terms for Construction

For the ’714 Patent:

• The Term: "automatically adjust the low-end intensity setting ... in response to the control signal from the sensing circuit" (Claim 25)
• Context and Importance: This phrase defines the core functionality of the invention. Its construction will determine whether any form of automatic calibration infringes, or only a specific type of feedback-driven adjustment for setting the dimming range based on the detected load type. Practitioners may focus on whether "in response to" requires an immediate, direct causal link as described in the patent's embodiments.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself is functional and does not specify the precise algorithm for adjustment, which may support its application to various automatic adjustment schemes.
  • Evidence for a Narrower Interpretation: The specification repeatedly links this automatic adjustment to distinguishing between incandescent and fluorescent loads to prevent flickering (’714 Patent, col. 6:39-44). Embodiments describe a specific update routine (Fig. 21) where the low-end value is changed based on whether the switch is conducting, suggesting the adjustment is not just any calibration but a specific load-type detection process.

For the ’459 Patent:

• The Term: "at a predetermined time" (Claim 17)
• Context and Importance: This temporal limitation is critical to defining the patented method. The dispute may turn on whether this term requires a specific, fixed time delay after firing the switch, as might be necessary to distinguish a CFL's current draw characteristics from an incandescent bulb's.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The term itself is not explicitly defined with a numerical value in the claim, which could suggest it covers any non-random, pre-set timing for a current check.
  • Evidence for a Narrower Interpretation: The specification describes this step in the context of an "operating mode update routine" designed to detect the lamp type (’459 Patent, col. 19:39-45; Fig. 21). An argument could be made that "predetermined time" must be construed as a time specifically chosen to achieve this diagnostic purpose, such as the 400 μsec period mentioned in one embodiment (’459 Patent, col. 20:21-26).

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement for all asserted patents, stating that Legrand provides interactive websites, installation guides, user guides, and training that instruct distributors and end-users on how to use the accused products in an infringing manner (Compl. ¶¶ 78, 96, 114, 132, 150, 168). Contributory infringement is also alleged, based on the sale of products with "special features" that are "specially designed to be used in an infringing manner and that have no substantial uses other than uses that infringe," such as an "Initial Turn-on feature that performs an automated min level trim sequence" (Compl. ¶¶ 85, 103).
• Willful Infringement: Willfulness is alleged for all asserted patents. The complaint bases this on Legrand being a competitor that Lutron has previously sued for patent infringement, which allegedly makes Legrand "well aware of Lutron's portfolio of active patents" (Compl. ¶¶ 79, 97). It further alleges that Legrand has had specific knowledge of the patents since at least the filing of the complaint and, prior to that, was willfully blind to Lutron's patent rights (Compl. ¶¶ 80-81).

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

This litigation presents several fundamental questions regarding the scope and application of patents on adaptive lighting controls. The outcome will likely depend on the court’s resolution of the following issues:

• A core issue will be one of definitional scope: can claims from patents that heavily describe solutions for CFL-specific problems be construed to cover the functionality of general-purpose dimmers that may perform different types of automatic load calibration?
• A second key issue will be one of technical specificity: do the accused dimmers perform the specific, timed operational steps required by the claims—such as checking for current flow "at a predetermined time" after activation—or do they achieve a similar result (stable dimming) through a technically distinct method?
• A third central question will concern design functionality: are Legrand’s remote controls, which are sized to fit standard wallplate openings, merely an implementation of an industry standard form factor, or do they practice the specific combination of features claimed in the ’800 and ’790 patents related to dual-use (handheld and wall-mounted) functionality?