DCT
1:18-cv-03814
Ultravision Tech LLC v. Formetco Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ultravision Technologies, LLC (Delaware / Texas)
- Defendant: Formetco, Inc. (Georgia)
- Plaintiff’s Counsel: Brown Rudnick LLP; McKool Smith, P.C.
- Case Identification: 1:18-cv-03814, E.D. Tex., 03/27/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has a regular and established place of business in the district and has transacted business involving the accused products within the district.
- Core Dispute: Plaintiff alleges that Defendant’s FTX line of modular LED displays infringes patents related to the construction of lightweight, waterproof, and cabinet-less LED display panels.
- Technical Context: The technology relates to modular LED panels used to construct large-scale digital billboards and displays, a market where cost, weight, and weather-resistance are significant factors.
- Key Procedural History: The complaint notes that a related action was filed on the same day before the U.S. International Trade Commission (ITC), asserting the same two patents against the same Defendant, which may lead to parallel litigation tracks with potentially different evidentiary standards and remedies.
Case Timeline
| Date | Event |
|---|---|
| 2013-12-31 | Earliest Priority Date for ’306 and ’782 Patents |
| 2016-05-24 | U.S. Patent No. 9,349,306 Issues |
| 2018-03-13 | U.S. Patent No. 9,916,782 Issues |
| 2018-03-27 | Related ITC Action Filed |
| 2018-03-27 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,349,306 - “Modular Display Panel” (Issued May 24, 2016)
The Invention Explained
- Problem Addressed: Prior large-format LED displays were not modular or waterproof, requiring them to be housed in heavy, bespoke cabinets with expensive fans or air conditioning systems for cooling, which increased costs for manufacturing, installation, and operation (Compl. ¶¶4-6).
- The Patented Solution: The invention is a self-contained, modular LED display panel designed to be lightweight and hermetically sealed, eliminating the need for an external cabinet ('306 Patent, col. 2:5-8). The panel comprises a casing with a recess for a printed circuit board (PCB) holding the LEDs, along with an integrated driver circuit and power supply ('306 Patent, Abstract). These standardized panels can be interlocked to form large displays of various sizes, simplifying installation and maintenance ('306 Patent, col. 6:42-53; Fig. 1A).
- Technical Importance: This "all-in-one," cabinet-less design approach sought to reduce the weight, complexity, and overall cost of large outdoor digital displays (Compl. ¶7).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶25).
- The essential elements of Claim 1 include:
- A casing with a recess and attachment points for multi-panel assembly.
- A printed circuit board (PCB) with a plurality of LEDs disposed in the recess.
- A driver circuit attached to the PCB.
- A power supply unit for the LEDs.
- A framework of louvers disposed over the PCB between rows of LEDs.
- The entire modular panel is sealed to be waterproof.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,916,782 - “Modular Display Panel” (Issued March 13, 2018)
The Invention Explained
- Problem Addressed: Similar to the ’306 Patent, this patent addresses the construction of modular LED displays, with a particular focus on thermal management within a sealed, cabinet-less unit ('782 Patent, col. 1:47-53). Effective heat dissipation is critical for the performance and lifespan of LEDs in an enclosed panel.
- The Patented Solution: The invention describes a modular display panel constructed with a "shell" made of a "first thermally conductive material" (e.g., aluminum) with plastic sidewalls ('782 Patent, col. 2:5-7, Abstract). A key feature is the inclusion of a "second thermally conductive material" placed between the internal power supply unit and the outer back side of the panel, designed to facilitate passive heat transfer out of the sealed unit ('782 Patent, col. 2:15-17, Fig. 2C).
- Technical Importance: The patent focuses on a specific construction using thermally conductive materials to manage heat in a passive, sealed system, which is a core challenge for outdoor digital displays that lack active cooling systems.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶39).
- The essential elements of Claim 1 include:
- A shell comprising a first thermally conductive material with plastic sidewalls.
- A PCB with LEDs disposed in the shell.
- A driver circuit coupled to the LEDs from the second side of the PCB.
- A power supply unit, with the PCB disposed between it and the LEDs.
- A second thermally conductive material between the power supply unit and the outer back side of the panel.
- A waterproof protective structure over the first side of the PCB.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused products are modular LED displays, identified as Defendant’s "FTX product" (Compl. ¶¶25, 39).
Functionality and Market Context
- The complaint alleges, upon information and belief, that the FTX product is a modular display panel designed for assembly into multi-panel displays (Compl. ¶26).
- Its alleged technical features include a casing with a recess, attachment points, a PCB with LEDs, a driver circuit, a power supply, a framework of louvers, and a waterproof seal (Compl. ¶¶26-30). The complaint includes a photograph showing the internal components and wiring of the accused FTX product (Compl. p. 8).
- The complaint positions the accused product as a recent market entry that allegedly copies Plaintiff's modular, waterproof design paradigm (Compl. ¶¶10, 12).
IV. Analysis of Infringement Allegations
9,349,306 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a casing having a recess...wherein the casing comprises attachment points for use in attachment as part of a multi-panel modular display... | The FTX product is alleged to be a modular display panel with a casing containing a recess and attachment points for creating larger displays. | ¶26 | col. 2:46-49 |
| a printed circuit board disposed in the recess; and a plurality of LEDs attached to a front side of the printed circuit board | The FTX product allegedly comprises a PCB situated within the recess, with multiple LEDs affixed to its front side. | ¶27 | col. 2:49-51 |
| a driver circuit attached to the printed circuit board; and a power supply unit for powering the LEDs | The complaint alleges the FTX product includes a driver circuit on the PCB and a power supply unit to power the LEDs. An image provided in the complaint shows internal circuitry and a power supply box. | ¶28; p. 8 | col. 2:52-53 |
| a framework of louvers disposed over the printed circuit board, the framework of louvers disposed between rows of the LEDs | The FTX product is alleged to have a framework of louvers placed over the PCB and between the LED rows. | ¶29 | col. 2:54-57 |
| wherein the modular display panel is sealed to be waterproof | The FTX is alleged to be sealed to be waterproof. | ¶30 | col. 30:19-20 |
- Identified Points of Contention:
- Scope Questions: A potential issue may be whether the accused product's internal structure constitutes a "recess" as contemplated by the patent, or if it is merely an enclosure.
- Technical Questions: The allegation that the panel is "sealed to be waterproof" is a functional limitation. The case may require evidence demonstrating the specific sealing methods used in the FTX product and whether they meet the level of waterproofing implied by the patent, such as an IP rating ('306 Patent, col. 7:36-39).
9,916,782 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a shell comprising a first thermally conductive material, wherein sidewalls of the shell comprise plastic | The FTX product is alleged to comprise a shell made of a thermally conductive material with plastic sidewalls. | ¶40 | col. 2:5-7 |
| a printed circuit board disposed in the shell; and a plurality of LEDs attached to a first side of the printed circuit board | The complaint alleges the FTX product has a PCB with LEDs inside the shell. | ¶41 | col. 2:7-9 |
| a driver circuit disposed in the shell and coupled to the plurality of LEDs from a second side of the printed circuit board | The FTX product is alleged to have a driver circuit inside the shell, coupled to the LEDs from the back of the PCB. | ¶42 | col. 2:9-12 |
| a power supply unit for powering the LEDs, the printed circuit board being disposed between the power supply unit and the plurality of LEDs | The FTX product is alleged to contain a power supply unit, with the PCB positioned between the power supply and the LEDs. | ¶43 | col. 2:12-15 |
| a second thermally conductive material disposed between the power supply unit and an outer back side of the panel | The FTX product is alleged to have a second thermally conductive material located between its power supply and its outer back surface. | ¶44 | col. 2:15-17 |
| a protective structure disposed over the first side of the printed circuit board, wherein a display side of the panel... is waterproof | The complaint alleges the FTX has a waterproof protective structure over the front of the PCB. | ¶¶45-46 | col. 2:17-20 |
- Identified Points of Contention:
- Technical Questions: All infringement allegations for the ’782 Patent are made "upon information and belief." A central evidentiary question will be whether the FTX product actually contains the "first thermally conductive material" and the distinct "second thermally conductive material" in the specific locations required by the claim. The composition and properties of these alleged materials will be a key factual dispute.
- Scope Questions: The term "shell" may become a focus of claim construction. The court may need to determine if it requires a unitary structure or can read on an assembly of different components.
V. Key Claim Terms for Construction
The Term: "sealed to be waterproof" (’306 Patent, Claim 1)
- Context and Importance: This term defines a critical functional capability of the invention. The dispute will likely center on the degree of waterproofing required. Defendant may argue for a strict standard (e.g., submersible, corresponding to a high IP rating mentioned in the specification), while Plaintiff may argue for a broader meaning (e.g., resistant to rain).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify a particular standard or IP rating, which may support an argument for its plain and ordinary meaning of being impervious to water under normal operating conditions.
- Evidence for a Narrower Interpretation: The specification explicitly discusses achieving high Ingress Protection ratings such as "IP 67" or "IP 68," which correspond to protection against submersion ('306 Patent, col. 7:32-40, col. 3:60-62). This could be used to argue that "waterproof" implies this higher, specified level of protection.
The Term: "a second thermally conductive material" (’782 Patent, Claim 1)
- Context and Importance: This element is a key differentiator of the ’782 Patent, focusing on thermal management. The existence, composition, and function of this specific material in the accused FTX product will be a primary factual question. Practitioners may focus on this term because the allegation is made on information and belief, suggesting it may be a point of significant factual discovery.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself is general. The specification provides an example of "aluminum" but does not limit the material to metals, which could support a construction that includes any material with properties sufficient to conduct heat away from the power supply ('782 Patent, col. 7:42-45).
- Evidence for a Narrower Interpretation: Defendant may argue that the term requires a discrete component added for the purpose of thermal conduction, as distinguished from inherent thermal properties of the power supply's own casing or the panel's shell. The patent's description of it as a separate element "disposed between" other components may support this narrower view ('782 Patent, col. 2:15-17).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating Defendant knowingly and intentionally supplies the FTX products to customers and end-users for use in an infringing manner (Compl. ¶¶32-34, 48-50). No specific evidence, such as user manuals or instructions, is cited.
- Willful Infringement: Willfulness is alleged based on knowledge "at least as of the date of this Complaint" (Compl. ¶¶33, 49). The complaint also pleads willful blindness, alleging Defendant acted with the belief of a high probability of infringement while remaining willfully blind (Compl. ¶¶34, 50). These allegations appear to primarily support a claim for post-suit willfulness.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction and function: How "waterproof" must a panel be to infringe the ’306 Patent? The case may turn on whether the accused product's weather resistance meets the specific functional and structural requirements defined by the claims, as informed by the specification's discussion of high IP ratings.
- A key evidentiary question will be one of technical composition: Does the accused FTX product actually contain the two distinct "thermally conductive materials" arranged in the specific layered configuration required by claim 1 of the ’782 Patent? As the allegations are based on "information and belief," the outcome will depend heavily on evidence uncovered during discovery regarding the product's internal construction and materials.