DCT
1:25-cv-01545
CHM Industries Inc v. Current Lighting Solutions LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: CHM Industries, Inc. (Texas)
- Defendant: Current Lighting Solutions, LLC (Delaware)
- Plaintiff’s Counsel: Phillips, McLaughlin & Hall, P.A. (Of Counsel: Foley & Lardner LLP)
- Case Identification: 1:25-cv-01545, D. Del., 12/19/2025
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is incorporated in and resides in the state.
- Core Dispute: Plaintiff alleges that Defendant’s high mast LED luminaires infringe four patents related to the thermal management and mechanical design of such lighting systems, particularly the separation of the power source and LED housings.
- Technical Context: The technology concerns high-power LED lighting for large outdoor areas, where dissipating heat from both the LEDs and their electronic drivers is a critical factor for ensuring product longevity and performance.
- Key Procedural History: The complaint details a significant pre-suit history between the parties, including a 2014 Non-Disclosure Agreement, a 2018 Settlement and License Agreement resolving a prior dispute over the earliest patent-in-suit, and a subsequent disagreement over royalty obligations for certain product configurations, which precipitated the current lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2014-10-01 | Parties enter into a Non-Disclosure Agreement (approximate date) |
| 2014-11-07 | Earliest Priority Date for all four Asserted Patents |
| 2014-12-01 | Plaintiff provides Defendant a sample of its Condor CLED product (approximate date) |
| 2017-06-13 | U.S. Patent No. 9,677,754 Issued |
| 2017-07-01 | Defendant begins selling the Accused Product (approximate date) |
| 2017-07-21 | Plaintiff provides Defendant notice of infringement of the ’754 Patent |
| 2018-02-27 | U.S. Patent No. 9,903,581 Issued |
| 2018-11-01 | Settlement and License Agreement between parties becomes effective |
| 2019-08-04 | Plaintiff contacts Defendant regarding unpaid royalties (approximate date) |
| 2019-09-19 | Defendant advises it would not pay royalties on certain products (approximate date) |
| 2020-02-25 | U.S. Patent No. 10,571,112 Issued |
| 2022-10-18 | U.S. Patent No. 11,473,767 Issued |
| 2025-12-19 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,677,754 - "Rotating Light Emitting Diode Driver Mount"
- Patent Identification: U.S. Patent No. 9,677,754, "Rotating Light Emitting Diode Driver Mount," issued June 13, 2017 (’754 Patent).
The Invention Explained
- Problem Addressed: The lifespan of high-power LED lighting is often limited not by the LEDs themselves, but by the failure of the electronic driver (power source) due to overheating (Compl. ¶9; ’754 Patent, col. 1:26-34). The combined heat generated by the high-power LEDs and the driver components creates a challenging thermal environment, particularly for high-mast luminaires where maintenance is difficult and costly (’754 Patent, col. 1:35-48).
- The Patented Solution: The invention separates the driver into its own "power housing" and physically distances it from the "LED housing" that contains the light-emitting diodes (’754 Patent, col. 2:8-14). This separation is achieved by positioning the power housing above the LED housing with a distinct "gap" between them, which reduces heat transfer through both conduction and convection (’754 Patent, Fig. 5; col. 2:26-33). Both housings are equipped with cooling fins to further dissipate heat into the ambient air (’754 Patent, col. 1:49-58).
- Technical Importance: This thermal management architecture allows for more reliable operation of high-power LED luminaires, facilitating the replacement of older, less efficient lighting technologies in demanding applications like roadway and stadium lighting (Compl. ¶¶7, 19).
Key Claims at a Glance
- The complaint asserts at least independent Claim 5 (Compl. ¶32).
- Essential elements of Claim 5 include:
- An LED housing that supports LEDs and has cooling fins on its back face.
- A power housing that is separate from and coupled to the LED housing.
- The power housing is disposed above the LED housing, creating a gap between the two.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,903,581 - "Rotating Light Emitting Diode Driver Mount"
- Patent Identification: U.S. Patent No. 9,903,581, "Rotating Light Emitting Diode Driver Mount," issued February 27, 2018 (’581 Patent).
The Invention Explained
- Problem Addressed: The patent addresses the same thermal management challenges as the ’754 Patent: preventing the overheating of driver electronics in high-mast LED lighting applications (’581 Patent, col. 1:26-48).
- The Patented Solution: This patent claims a similar thermally separated architecture but adds the functional feature of a "rotatably coupled" LED housing (’581 Patent, Abstract). An extension member connects the two housings, providing both the thermal separation and a pivot point, which allows the LED housing to be aimed (rotated up to 360 degrees) independently of the fixed power housing (’581 Patent, col. 6:15-19, 6:40-46). This combination of thermal isolation and aiming flexibility is a key aspect of the described solution.
- Technical Importance: The ability to independently aim the light source provides greater flexibility in optimizing illumination for specific ground areas without compromising the luminaire's thermal design (Compl. ¶7).
Key Claims at a Glance
- The complaint asserts at least independent Claim 15 (Compl. ¶45).
- Essential elements of Claim 15 include:
- A power housing containing a plurality of drivers.
- An LED housing that is "rotatably coupled to and thermally separated from the power housing."
- LED cooling fins extending from the LED housing toward the power housing.
- A plurality of LEDs supported by the LED housing and powered by the drivers.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 10,571,112 - "Rotating Light Emitting Diode High Mast Luminaire"
- Patent Identification: U.S. Patent No. 10,571,112, "Rotating Light Emitting Diode High Mast Luminaire," issued February 25, 2020 (’112 Patent).
- Technology Synopsis: The ’112 Patent describes a high-mast luminaire designed to solve the problem of driver overheating by physically separating the power source and the LEDs (’112 Patent, col. 1:24-48). The invention comprises a power housing with an internal power source, a separate LED housing with cooling fins, and an extension member connecting the two, thereby creating a thermally insulating gap while also allowing the LED housing to be rotatable with respect to the power housing (’112 Patent, Abstract).
- Asserted Claims: At least independent Claim 1 is asserted (Compl. ¶60).
- Accused Features: The complaint alleges that the Accused Product’s separate power and LED housings, power source, cooling fins, extension member, and rotatable LED housing infringe the ’112 Patent (Compl. ¶¶61-67).
U.S. Patent No. 11,473,767 - "Rotating Light Emitting Diode High Mast Luminaire"
- Patent Identification: U.S. Patent No. 11,473,767, "Rotating Light Emitting Diode High Mast Luminaire," issued October 18, 2022 (’767 Patent).
- Technology Synopsis: The ’767 Patent also pertains to thermal management in high-mast lighting by separating the heat-generating components (’767 Patent, col. 1:29-41). The claims focus on an apparatus comprising an LED housing with a panel for receiving LEDs, a power housing that is separate from and coupled to the LED housing, and a gap between the two housings to reduce heat transfer (’767 Patent, col. 2:33-39).
- Asserted Claims: At least independent Claim 6 is asserted (Compl. ¶76).
- Accused Features: The Accused Product is alleged to infringe based on its inclusion of an LED housing with a panel for LEDs and a separate power housing coupled to it with a gap in between (Compl. ¶¶77-79).
III. The Accused Instrumentality
- Product Identification: Defendant’s "Evolve LED Roadway Light High Mast Luminaire (ERHM) and subsequent generations of this product" (the "Accused Product") (Compl. ¶¶19, 31).
- Functionality and Market Context: The Accused Product is a high mast lighting system used for illuminating large areas such as roadways, parking lots, and prisons (Compl. ¶19). The complaint alleges the product incorporates a design with two distinct primary components: an LED housing that supports the LEDs and has cooling fins on its back face, and a separate power housing containing the driver electronics (Compl. ¶¶34, 48-50). The power housing is allegedly disposed above the LED housing, creating a physical gap between them (Compl. ¶35). The complaint further alleges that the LED housing is rotatably coupled to the power housing (Compl. ¶49). Defendant is described as a direct competitor to Plaintiff in the high mast lighting market (Compl. ¶19). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’754 Patent Infringement Allegations
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a LED housing supporting a plurality of LEDs and having a plurality of cooling fins extending from and substantially covering a back face of the LED housing | The Accused Product includes an LED housing that holds multiple LEDs and has multiple cooling fins extending from its back face. | ¶34 | col. 8:54-58 |
| a power housing separate from and coupled to the LED housing, the power housing being disposed above the LED housing and creating a gap therebetween | The Accused Product includes a power housing that is a separate component from the LED housing, is coupled to it, is positioned above it, and has a gap between the two housings. | ¶35 | col. 8:59-63 |
’581 Patent Infringement Allegations
| Claim Element (from Independent Claim 15) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a power housing defining an opening configured to receive a high mast extension member therethrough | The Accused Product’s power housing has an opening designed to receive a high mast extension member. | ¶47 | col. 5:39-41 |
| a plurality of drivers contained within the power housing | The Accused Product’s power housing contains multiple drivers. | ¶48 | col. 7:38-40 |
| a light emitting diode (LED) housing rotatably coupled to and thermally separated from the power housing | The Accused Product's LED housing can rotate relative to the power housing and is thermally separated from it. | ¶49 | col. 6:15-17 |
| a plurality of LED cooling fins extending from the LED housing toward the power housing | The Accused Product has multiple cooling fins that extend from the LED housing in the direction of the power housing. | ¶50 | col. 8:51-54 |
| a plurality of LEDs supported by the LED housing and powered by the plurality of drivers | The Accused Product's LEDs are held by the LED housing and receive power from the drivers located in the power housing. | ¶51 | col. 8:59-64 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges that the current dispute arose after Defendant claimed that products with "certain optical distributions" were not covered by the 2018 Settlement and License Agreement (Compl. ¶27). This suggests a primary point of contention may be contractual rather than purely technical, centering on whether the accused configurations fall within the definition of "Licensed Product" under that agreement.
- Technical Questions: For the ’754 Patent, a potential issue for the court could be the meaning of the cooling fins "substantially covering" the back face of the LED housing. For the ’581 Patent, a key technical question may relate to the degree of "thermal separation" required by the claims and whether the accused product's design achieves it.
V. Key Claim Terms for Construction
The Term: "thermally separated" (’581 Patent, Claim 15)
Context and Importance: This term is central to the core inventive concept of mitigating heat transfer between the two main components of the luminaire. The outcome of the infringement analysis may depend on whether the mere presence of a physical gap is sufficient to meet this limitation, or if a specific degree of thermal insulation must be demonstrated.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the power housing as "separate and thermally isolated from but connected to the LED housing" and notes that an extension member creates a gap that "reduces heat transfer... via convection and conduction" (’581 Patent, col. 6:11-13, col. 6:55-57). This language may support an argument that the claimed physical structure inherently provides the required thermal separation.
- Evidence for a Narrower Interpretation: The background section emphasizes that the invention is meant to solve the problem of driver overheating and extend its life (’581 Patent, col. 1:26-48). A party could argue that "thermally separated" should be construed to require a degree of separation sufficient to achieve this stated functional objective, rather than just the presence of a gap.
The Term: "substantially covering" (’754 Patent, Claim 5)
Context and Importance: This term of degree defines how much of the LED housing's back face must be covered by cooling fins. Practitioners may focus on this term because its interpretation will determine whether accused products with different fin densities or arrangements fall within the claim's scope.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's overall purpose is heat dissipation, which could support a construction where "substantially covering" means enough fin coverage to effectively perform that function, without requiring a specific percentage of surface area. The specification does not provide a precise numerical range.
- Evidence for a Narrower Interpretation: A party might point to figures in the patent family, such as Figure 4C in the ’581 Patent, which depict a dense array of fins covering nearly the entire back surface. Such embodiments could be used to argue that the term implies a very high degree of coverage, consistent with what is shown in the drawings.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is based on Defendant allegedly encouraging infringement by end-users and installers, while contributory infringement is based on selling a product especially made for practicing the invention that is not a staple article of commerce (Compl. ¶¶40-41, 55-56, 71-72, 83-84).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's knowledge of the patents. This knowledge is alleged to stem from direct notice of the ’754 Patent in July 2017 and from the 2018 Settlement and License Agreement, which granted Defendant a license to the ’581, ’112, and ’767 patents upon their issuance (Compl. ¶¶39, 54, 70, 82). The continued alleged infringement after the royalty dispute began is asserted as the basis for willfulness.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue appears to be one of contractual scope: does the Defendant’s alleged infringement constitute a breach of the 2018 Settlement and License Agreement, or do the accused products with "certain optical distributions" fall outside the scope of the "Licensed Product" as defined in that agreement? The resolution of the patent claims may be deeply intertwined with the interpretation of this prior contract.
- A second core issue will be willfulness and intent: given the parties' extensive prior relationship, including direct notice of infringement and a license agreement, a key question for the fact-finder will be whether Defendant's decision to cease royalty payments was based on an objectively reasonable, good-faith belief of non-coverage, or if its continued sales constituted objective recklessness sufficient to support a finding of willful infringement.
- A key technical question will be one of definitional scope: can terms of degree like "thermally separated" and "substantially covering" be construed in a way that reads on the specific physical structure and performance characteristics of the Accused Product? The case may turn on whether the mere existence of a structural gap and fins is sufficient, or if a particular functional threshold of heat management must be met.