DCT
1:17-cv-00997
Telebrands Corp v. 1byone Products Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Telebrands Corp. (New Jersey)
- Defendant: 1ByOne Products Inc. (Delaware)
- Plaintiff’s Counsel: Drinker Biddle & Reath LLP
- Case Identification: 1:17-cv-00997, D. Del., 07/21/2017
- Venue Allegations: Venue is alleged to be proper as Defendant is a Delaware corporation and allegedly transacts business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s decorative laser projectors infringe two patents related to the mechanical structure and motion features of such devices.
- Technical Context: The technology concerns outdoor laser light projectors, a consumer product category that gained popularity as a convenient alternative to traditional decorative string lighting.
- Key Procedural History: The complaint notes that Plaintiff previously filed a lawsuit against Defendant for infringement of the same patents in the District of New Jersey on May 11, 2017. This prior action serves as the primary basis for the complaint's allegations of pre-suit notice and willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2015-12-03 | Earliest Priority Date for '775 and '673 Patents |
| 2017-01-17 | '775 Patent Issued |
| 2017-02-07 | '673 Patent Issued |
| 2017-05-11 | Prior Lawsuit Filed (Date of Alleged Actual Notice) |
| 2017-07-21 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,546,775 - “Decorative Lighting Apparatus Having Two Laser Light Sources,” issued January 17, 2017 (’775 Patent)
The Invention Explained
- Problem Addressed: The patent identifies shortcomings with existing decorative laser lights, such as inconveniently located switches and the use of unreliable adhesives or tapes to secure lenses that scatter the laser light ( Compl. ¶9; ’775 Patent, col. 1:31-44).
- The Patented Solution: The invention is a decorative lighting apparatus featuring two distinct laser light sources and a "motion assembly." This assembly includes at least one "articulating optical element" placed in the path of both laser beams, which is driven by a motor. The motor's movement causes the optical element to articulate, thereby projecting the laser light onto a surface in a dynamic, predetermined pattern ('775 Patent, Abstract; col. 2:20-47).
- Technical Importance: The technology aimed to provide consumers with a more engaging and dynamic decorative lighting effect compared to static light displays, while simplifying installation compared to traditional string lights (Compl. ¶9).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶16). The essential elements are:
- A first laser light source generating a first light.
- A second laser light source generating a second light.
- A motion assembly including at least one articulating optical element disposed in the path of both the first and second lights.
- At least one motor coupled to the articulating optical element to drive its movement.
- The motion assembly is configured so that this movement causes the projected lights to move across a surface in a predetermined pattern.
- The complaint notes infringement of "one or more claims" of the patent, reserving the right to assert additional claims (Compl. ¶24).
U.S. Patent No. 9,562,673 - “Decorative Lighting Apparatus Having An Attenuation Assembly,” issued February 7, 2017 (’673 Patent)
The Invention Explained
- Problem Addressed: The patent background discusses the general problems of existing laser lights, including potential dangers from the lasers and the use of "unreliable adhesives and tapes" to affix lenses, which are prone to failure ('673 Patent, col. 1:29-34).
- The Patented Solution: The invention is a specific mechanical "attenuation assembly" for securely housing an attenuator (e.g., a diffraction grating). It describes a nested structure where a first housing part couples to a second housing part to form a recess that holds the attenuator. This entire housing unit is then held in a "further recess" formed by coupling a first base part to a second base part, creating a stable, fixed position for the optical component ('673 Patent, Abstract; col. 2:3-14).
- Technical Importance: This design provides a robust mechanical mounting solution for the critical optical components of a laser projector, intended to enhance reliability and safety over prior methods ('673 Patent, col. 1:21-34).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶17). The essential elements are:
- An attenuator.
- A first housing configured to be coupled to a second housing.
- A first base configured to be coupled to a second base.
- The coupled housings form a recess designed to receive and hold the attenuator in a substantially fixed position.
- The coupled bases form a further recess designed to receive and hold the coupled housing assembly in a substantially fixed position.
- The complaint notes infringement of "one or more claims" of the patent, reserving the right to assert additional claims (Compl. ¶33).
III. The Accused Instrumentality
Product Identification
- The accused products are identified by the brand "GARDEN LASER LIGHT MOTION" and titles such as “1ByOne Outdoor Laser Lights for Christmas” and “1byone Magical Laser Light with Green Christmas and Red Star Patterns,” specifically including item model number OUS00-0817 (Compl. ¶15).
Functionality and Market Context
- The complaint alleges the accused product is a decorative laser lighting apparatus that includes first and second laser light sources and a motion assembly with a motor and an articulating optical element, which causes the projected light to move (Compl. ¶16).
- It is also alleged to include an "attenuator," described as a "tube-shaped geared member having a diffraction grating," held within a recess formed by coupled housing components, which are in turn held by a recess formed by coupled base components (Compl. ¶17).
- Plaintiff alleges that the accused product "directly competes" with its own STAR SHOWER® line of products (Compl. ¶19).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'775 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first laser light source generating a first light; a second laser light source generating a second light; | The product includes first and second laser light sources that generate a first and second light. | ¶16 | col. 1:57-59 |
| a motion assembly including: at least one articulating optical element disposed in a first path of the first light being generated by the first laser light source and a second path of the second light... | The product includes a motion assembly with an "articulating optical element" disposed in the path of the light generated by the first and second laser light sources. | ¶16 | col. 7:40-45 |
| and at least one motor coupled to the at least one articulating element such that a movement generated by the motor drives the at least one articulating optical element, | The product's motor is coupled to the articulating element via gears, which transfer rotational movement from the motor to drive the element. | ¶16 | col. 7:59-8:8 |
| the motion assembly being configured such that the movement...causes the first light and the second light to move across a surface onto which the first light and the second light are being projected... | During operation, the rotational movement driving the articulating element causes the light passing through it to move across the surface onto which it is being projected. | ¶16 | col. 8:10-20 |
'673 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an attenuator; | The product includes an attenuator, which is alleged to be a "tube-shaped geared member having a diffraction grating." | ¶17 | col. 7:6-12 |
| a first housing being configured to be coupled to a second housing;...the first housing being coupled to the second housing to form a recess designed...to receive and hold the attenuator... | The product includes a first and second housing coupled via screws, which form a recess that is designed and dimensioned to receive and hold the geared member. | ¶17 | col. 8:26-40 |
| a first base being configured to be coupled to a second base,...the first base being coupled to the second base to form a further recess...to receive and hold the coupled first housing and second housing... | The product includes a first and second base coupled via screws, which form a "further recess" designed to receive and hold the coupled housing assembly. | ¶17 | col. 8:26-40 |
Identified Points of Contention
- Scope Questions: A central question for the '773 patent will be whether the accused "tube-shaped geared member having a diffraction grating" (Compl. ¶17) meets the definition of an "attenuator" as used in the patent. While the specification allows for a "lens to diffract and/or scatter the light" ('673 Patent, col. 7:11-12), the primary meaning of "attenuator" often implies power reduction.
- Technical Questions: For the '775 Patent, the infringement read depends on whether the accused product's internal mechanism constitutes an "articulating optical element" driven by a motor in the manner claimed. For the '673 Patent, a key factual question will be whether the accused product actually contains the specific nested two-part housing and two-part base structure required by the claim. The complaint makes these allegations without providing supporting visual evidence like product teardowns or diagrams.
V. Key Claim Terms for Construction
The Term: "articulating optical element" (’775 Patent, Claim 1)
- Context and Importance: This term is the central feature of the '775 Patent's motion claims. Its construction will determine whether a wide or narrow range of motion-creating mechanisms falls within the scope of the patent. Practitioners may focus on this term because the allegation that the accused product has such an element is conclusory (Compl. ¶16).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the element as being "rotated or oscillated" ('775 Patent, col. 8:7-8) and capable of producing "any visual and/or optical effect" ('775 Patent, col. 7:23-24), which may support a broad definition not limited to a specific mechanism.
- Evidence for a Narrower Interpretation: The primary embodiment shows "articulating optical elements 510" that are "secured on a separate component which may be coupled to gears 506 and/or 508" ('775 Patent, col. 8:1-5; Fig. 5B). A party could argue the term should be limited to such a gear-driven rotating element.
The Term: "attenuator" (’673 Patent, Claim 1)
- Context and Importance: This is the component that the entire claimed assembly of the '673 Patent is designed to hold. The infringement case hinges on the accused "tube-shaped geared member having a diffraction grating" (Compl. ¶17) qualifying as an "attenuator."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that an "attenuator" can be a "lens to diffract and/or scatter the light" ('673 Patent, col. 7:11-12), which appears to directly support the plaintiff’s allegation that a diffraction grating is an attenuator.
- Evidence for a Narrower Interpretation: A party may argue that the term "attenuator" implies a primary function of power reduction, a common meaning in optics. This is supported by language in the patent stating, "Attenuators may be necessary where light sources 106 include lasers since lasers can be dangerous and can cause damage to eyesight" ('673 Patent, col. 7:16-18), which links the term to safety and power limitation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that the defendant contributes to and induces infringement by "encouraging, marketing, and promoting the use, manufacture, importation, offer for sale, and sale of the Infringing Product" (Compl. ¶¶ 25, 34). These allegations are not supported by specific factual assertions, such as references to user manuals or advertising materials.
- Willful Infringement: The complaint alleges willful infringement based on Defendant having actual knowledge of the patents-in-suit "at least as early as May 11, 2017," the date a prior lawsuit was filed in New Jersey (Compl. ¶¶ 20, 28, 37). The allegation is that Defendant continued to infringe after receiving this notice.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "attenuator," as used in the ’673 Patent, be construed to cover a component described as a "tube-shaped geared member having a diffraction grating," or is its meaning limited to devices whose primary purpose is power reduction for safety?
- A second central question is one of technical evidence: does the accused product, which is described in the complaint without visual support, actually embody the specific mechanical structures of the asserted claims—namely, the "articulating optical element" of the ’775 Patent and the nested, four-part housing-and-base assembly of the ’673 Patent?
- Finally, the willfulness claim will likely depend on timing and conduct: what actions, if any, did Defendant take to assess the merits of Plaintiff's infringement allegations after being put on notice by the prior New Jersey lawsuit on May 11, 2017?