DCT
3:18-cv-00416
Hartman Design Inc v. Ted's Jobs Bank Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Hartman Design Inc. (Pennsylvania)
- Defendant: Ted’s Jobs Bank, Inc. d/b/a/ TJB-INC. (Connecticut) and Ted J. Greiner
- Plaintiff’s Counsel: Fox Rothschild LLP
- Case Identification: 3:18-cv-00416, D. Conn., 03/16/2018
- Venue Allegations: Venue is based on allegations that the Defendants reside in the district, have an established place of business within the district, and have committed acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s landscape lighting products infringe three utility patents and one design patent related to lamps designed for integration into hardscape structures like retaining walls and steps.
- Technical Context: The technology concerns low-voltage lighting fixtures that are installed by inserting a mounting plate between discrete masonry elements (e.g., paver blocks), allowing for seamless illumination of the structure itself.
- Key Procedural History: The complaint alleges that Plaintiff’s counsel sent a letter to Defendants on February 7, 2018, providing actual notice of the patents-in-suit and the alleged infringement prior to the filing of the amended complaint. This notice forms the basis for the willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2006-07-07 | Priority Date for U.S. Patent No. D576,763 |
| 2006-09-07 | Priority Date for U.S. Patent Nos. 8,066,398; 8,672,502; 9,618,170 |
| 2008-09-09 | U.S. Patent No. D576,763 Issues |
| 2011-11-29 | U.S. Patent No. 8,066,398 Issues |
| 2014-03-18 | U.S. Patent No. 8,672,502 Issues |
| 2017-04-11 | U.S. Patent No. 9,618,170 Issues |
| 2018-02-07 | Plaintiff sends pre-suit notice letter to Defendants |
| 2018-03-16 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,066,398 - Lamp and Illuminated Hardscape
Issued November 29, 2011
The Invention Explained
- Problem Addressed: The patent identifies a need for lighting that can be integrated directly into hardscape structures, as opposed to conventional standalone lamps mounted in the ground adjacent to such structures (e.g., retaining walls). (’398 Patent, col. 1:37-43).
- The Patented Solution: The invention is a lamp assembly featuring a thin plate designed to be positioned between two stacked hardscape elements, such as paver blocks. The weight of the blocks and friction retain the plate, which has a flange extending from it to hold a light fixture. This design allows the lamp to become an "integral part of the hardscape" without requiring separate fasteners or ground mounts. (’398 Patent, col. 1:41-43, col. 2:46-52). The configuration is illustrated in the patent’s Figure 5, which shows the lamp installed between two block-like elements (40) of a wall (38).
- Technical Importance: This approach provides a method for creating built-in, downward-facing illumination for walls and steps, enhancing both aesthetics and safety. (’398 Patent, col. 4:30-34).
Key Claims at a Glance
- The complaint asserts independent claims 1, 13, and 21.
- The essential elements of independent claim 1 include:
- A lamp for mounting on a structure of stacked discrete elements.
- A plate positionable between at least two of the elements.
- Contact between the plate and elements retains the lamp.
- A flange attached to the plate at substantially a right angle.
- A light fixture attached to the lamp, positioned to face both the underside of the plate and the second surface of the flange.
- The complaint also asserts dependent claims 3, 4, 6, 8-11, and 16, reserving the right to assert others. (Compl. ¶22).
U.S. Patent No. 8,672,502 - Lamp and Illuminated Hardscape
Issued March 18, 2014
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’398 patent, this patent addresses the same problem of integrating lighting directly into hardscape structures. (’502 Patent, col. 1:40-45).
- The Patented Solution: This invention refines the lamp design, claiming a plate with a length and width "substantially larger than a thickness" and which defines a "given perimeter with a projection portion." The light source is specifically claimed as being on the underside of the plate and located "within the given perimeter and proximate the projection portion." (’502 Patent, Abstract; Claim 1). This language emphasizes the geometry of the part of the plate that extends outward from the hardscape structure.
- Technical Importance: The claimed geometry aims to ensure the light source is positioned effectively to illuminate the hardscape surface below it. (’502 Patent, col. 2:7-9).
Key Claims at a Glance
- The complaint asserts independent claims 1, 10, and 11.
- The essential elements of independent claim 1 include:
- A lamp for mounting on a structure of stacked discrete elements.
- A plate positionable between the elements, with contact retaining the lamp.
- The plate has a length and width substantially larger than its thickness and defines a given perimeter with a "projection portion."
- A light fixture with a light source is attached to the plate's underside, within the perimeter and "proximate the projection portion."
- The complaint also asserts dependent claims 2-7 and 9-11, reserving the right to assert others. (Compl. ¶30).
U.S. Patent No. 9,618,170 - Lamp and Illuminated Hardscape
Issued April 11, 2017
- Patent Identification: U.S. Patent No. 9,618,170, "Lamp and Illuminated Hardscape," issued April 11, 2017. (Compl. ¶13).
- Technology Synopsis: This patent claims the illuminated hardscape structure itself, not just the lamp. A key limitation focuses on the functional result of the lighting: a lamp mounted on a riser above a step tread, where the light source distributes light "substantially parallel to the riser and not perpendicular thereto." (’170 Patent, Claim 1). This shifts the inventive concept toward the directionality of the illumination.
- Asserted Claims: Independent claims 1, 8, and 13 are asserted. (Compl. ¶38).
- Accused Features: The complaint alleges that the TJB Wall Eye II product, when installed on hardscape steps as allegedly instructed by Defendants, creates an infringing structure. Specifically, the complaint points to the product's "flange" as causing the light to be distributed downward, parallel to the riser. (Compl. ¶39, ¶11).
U.S. Patent No. D576,763 - Light Fixture
Issued September 9, 2008
- Patent Identification: U.S. Patent No. D576,763, "Light Fixture," issued September 9, 2008. (Compl. ¶14).
- Technology Synopsis: This is a design patent that protects the ornamental, non-functional design of a light fixture. The drawings show the visual appearance of the lamp's external housing. (D’763 Patent, Figs. 1-12).
- Asserted Claims: The single claim of the design patent is asserted. (Compl. ¶46).
- Accused Features: The overall ornamental appearance of the TJB Wall Eye II LED Low-Voltage Landscape Light is accused of infringing the patented design. (Compl. ¶16).
III. The Accused Instrumentality
Product Identification
The "TJB Wall Eye II LED Low-Voltage Landscape Light" is the accused product. (Compl. ¶9).
Functionality and Market Context
The complaint describes the accused product as a light fixture for use in outdoor hardscapes such as retaining walls, steps, and paved areas. (Compl. ¶8). Visual evidence provided in the complaint shows a device with a flat mounting plate from which a light assembly is suspended. A photograph labeled Figure 1 in the complaint depicts the underside of the accused product, showing its light sources, plate, and a flange. (Compl. ¶9). A second photograph, Figure 2, shows the top side of the plate. (Compl. ¶9). The design appears to function by inserting the plate between courses of pavers or blocks, with the light assembly projecting outward to illuminate the surface below.
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,066,398 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a plate positionable between at least two of said elements, | The thin, flat configuration of the product's plate allows it to be positioned between two discrete hardscape elements. | ¶23 | col. 3:50-54 |
| contact between said plate and said elements retaining said lamp in position on said structure, | Friction from contact between the plate and the discrete elements is alleged to maintain the lamp in position. | ¶23 | col. 2:50-52 |
| a flange attached to said plate, said flange being oriented substantially at a right angle to the plane of said plate... | Figure 1 in the complaint is referenced to show a flange extending from the plate's underside at a 90-degree angle. | ¶23 | col. 3:4-6 |
| a light fixture attached to said lamp, | The light fixture is alleged to be attached to the plate via threaded posts and nuts. | ¶23 | col. 3:7-9 |
| said light fixture being positioned facing said underside of said plate and said second surface of said flange. | The complaint alleges the light fixture is underneath the plate (and thus faces it) and also faces the inwardly facing (second) surface of the flange. | ¶23 | col. 5:26-29 |
- Identified Points of Contention:
- Scope Questions: The final limitation of claim 1 requires the light fixture to be positioned "facing said underside of said plate and said second surface of said flange." A court may need to determine if the accused product’s geometry satisfies this dual-orientation requirement or if the light fixture primarily faces only one of these surfaces.
- Technical Questions: The complaint alleges that "friction" satisfies the "contact... retaining said lamp" limitation. The sufficiency of simple friction to meet this element, without a more specific retaining mechanism, may become a point of dispute, although the patent specification itself appears to support this theory. (’398 Patent, col. 2:50-52).
U.S. Patent No. 8,672,502 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| said plate having a length and width substantially larger than a thickness between the top side and underside | The complaint references Figures 1 and 2 as showing this property. | ¶31 | col. 5:27-29 |
| and defining a given perimeter with a projection portion; | The complaint references Figures 1 and 2 as "showing a perimeter of the plate defining a projection portion which projects from the discrete elements." | ¶31 | col. 2:6-8 |
| and a light fixture, including at least one light source, attached relative to said plate such that said light source is on the underside of said plate within the given perimeter and proximate the projection portion. | The light fixture is alleged to be attached to the underside of the plate, under the projection portion, and within the perimeter defined by the plate. | ¶31 | col. 5:31-34 |
- Identified Points of Contention:
- Scope Questions: A central question will be the proper construction of "projection portion." The complaint identifies this feature on the accused product, but a dispute could arise over whether the term requires a specifically defined section of the plate or if it can refer to any part that happens to extend from the wall upon installation.
- Technical Questions: Infringement will depend on the factual determination of the spatial relationship between the light source and the "projection portion." The claim requires the light source to be "proximate" to this portion, a term whose meaning in this context may be debated.
V. Key Claim Terms for Construction
For the ’398 Patent:
- The Term: "flange"
- Context and Importance: The relationship between the plate, flange, and light fixture is the core of the claimed lamp structure. The definition of "flange" is therefore critical to determining infringement of claim 1.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests flexibility, stating the flange "could be oriented at virtually any angle relative to the plate." (’398 Patent, col. 3:5-6). This may support a construction that is not limited to a specific angle or shape.
- Evidence for a Narrower Interpretation: The preferred embodiments depicted in the patent consistently show the flange as a distinct, planar component attached or bent at a right angle from the plate. (’398 Patent, Figs. 1-2, 7-8). This could support an argument that the term is limited to such a structure.
For the ’502 Patent:
- The Term: "projection portion"
- Context and Importance: This term appears in the independent claim of the ’502 patent but not the parent ’398 patent, suggesting it is a key distinguishing feature. The location of the light source is defined relative to this "projection portion," making its definition essential for the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The Summary of the Invention states, "A portion of the plate projects outwardly from the wall." (’502 Patent, col. 2:7-8). This language could support a broad definition where any part of the plate extending from between the hardscape elements constitutes the "projection portion."
- Evidence for a Narrower Interpretation: The abstract links this portion to the lamp's function: "A portion of the plate projects out from the structure allowing the fixture to cast light on the structure surface." This may support a narrower construction requiring the "projection portion" to have a size and shape sufficient to enable this specific function, rather than simply being any part that extends outward.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendants provide instructions to customers to use the accused lights in hardscapes in a manner that directly infringes the patents. (Compl. ¶18). The claim chart for the ’170 patent explicitly alleges TJB "instructs & encourages its customers to mount the Wall Eye II light on hardscape steps." (Compl. ¶39).
- Willful Infringement: The complaint alleges willful infringement based on Defendants’ continued infringement after receiving actual notice via a letter from Plaintiff's counsel dated February 7, 2018. (Compl. ¶19, 26, 34, 42, 49).
VII. Analyst’s Conclusion: Key Questions for the Case
A core issue will be one of claim construction: Can key structural terms like "flange" (’398 patent) and "projection portion" (’502 patent) be construed broadly to read on the accused product's geometry, or will they be limited to the more specific embodiments shown in the patent figures?
A second issue will be one of functional infringement: For the ’170 patent, which claims an illuminated structure, a key evidentiary question will be whether the accused light distributes illumination "substantially parallel to the riser." This functional limitation will likely require expert analysis of the light's performance when installed as intended.
A third issue will be the design patent claim: This will turn on a visual comparison test—whether an ordinary observer, familiar with the prior art, would find the overall ornamental appearance of the accused TJB light to be substantially the same as the design claimed in the D’763 patent.