DCT
1:21-cv-05270
Wangs Alliance Corp v. Lumien Enterprises Inc
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Wangs Alliance Corporation d/b/a WAC Lighting (New York)
- Defendant: Lumien Enterprise, Inc. d/b/a Lumien Lighting (Georgia)
- Plaintiff’s Counsel: Atlanta Technology Law; Radulescu LLP
- Case Identification: 1:21-cv-05270, N.D. Ga., 11/04/2022
- Venue Allegations: Venue is alleged to be proper as Defendant is a Georgia corporation with a regular and established place of business in Kennesaw, Georgia, within the Northern District of Georgia.
- Core Dispute: Plaintiff alleges that Defendant’s landscape lighting products infringe five patents related to user-adjustable, waterproof LED light fixtures, and further alleges that Defendant materially breached a prior settlement agreement related to two of the patents-in-suit.
- Technical Context: The technology concerns outdoor LED landscape lighting, a field where fixtures must withstand environmental exposure while allowing for field adjustments of brightness and beam angle.
- Key Procedural History: The complaint alleges that the parties previously litigated two of the patents-in-suit ('832' and '888'), resulting in a February 2020 Settlement Agreement. Plaintiff alleges Defendant materially breached this agreement, rendering its release from liability void. Additionally, an International Trade Commission (ITC) investigation involving two other patents-in-suit ('101' and '971') resulted in an October 2021 Consent Order prohibiting Defendant from importing or selling infringing products. This history suggests that Defendant’s knowledge of the patents will be a key issue for allegations of willful and indirect infringement.
Case Timeline
| Date | Event |
|---|---|
| 2015-12-15 | Earliest Priority Date for all Patents-in-Suit |
| 2019-06-18 | U.S. Patent No. 10,323,832 Issued |
| 2019-10-16 | Plaintiff files initial complaint in prior N.D. Ga. litigation |
| 2019-11-05 | U.S. Patent No. 10,465,888 Issued |
| 2019-11-06 | Plaintiff files amended complaint in prior litigation asserting '888 Patent |
| 2020-02-20 | Parties enter Settlement Agreement in prior litigation |
| 2020-02-25 | U.S. Patent No. 10,571,101 Issued |
| 2020-03-02 | Prior litigation dismissed with prejudice per Settlement Agreement |
| 2020-03-24 | U.S. Patent No. 10,598,358 Issued |
| 2021-02-16 | U.S. Patent No. 10,920,971 Issued |
| 2021-03-09 | Plaintiff files ITC complaint against Defendant |
| 2021-04-07 | ITC Investigation No. 337-TA-1261 is instituted |
| 2021-10-06 | ITC enters Consent Order against Defendant regarding '101 and '971 patents |
| 2022-11-04 | Current First Amended Complaint for Patent Infringement filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,323,832 - "LED Lighting Methods and Apparatus"
- Patent Identification: U.S. Patent No. 10,323,832, "LED Lighting Methods and Apparatus," issued June 18, 2019.
The Invention Explained
- Problem Addressed: The patent addresses the problem that configuring outdoor light fixtures traditionally required disassembly by an installer in the field, which could compromise the fixture's integrity and expose electrical components to dirt, water, and corrosion (Compl. ¶19; ’832 Patent, col. 1:31-44).
- The Patented Solution: The invention is an LED light base assembly with an external dimming control knob that adjusts power output without compromising the unit's watertight seals (Compl. ¶¶20-21). This is achieved by positioning a seal between the dimming knob and the driver housing wall, allowing a shaft from the knob to physically contact an internal potentiometer while maintaining a seal (’832 Patent, Abstract; col. 2:10-21).
- Technical Importance: This solution allows for field adjustment of a luminaire's brightness while maintaining its durability and resistance to outdoor elements, increasing the product's versatility and lifespan (Compl. ¶20).
Key Claims at a Glance
- The complaint asserts at least Claim 1 but its narrative infringement allegations correspond to the elements of independent Claim 1 and dependent Claim 2 (Compl. ¶77). The essential elements of Claim 2, which depends from Claim 1, are:
- An LED light base assembly comprising:
- a driver housing including a base portion including a control knob opening in a wall of the base portion;
- an LED driver assembly including a potentiometer;
- a seal;
- a dimming control knob including a shaft portion, with the seal positioned to provide a water tight seal between the knob and the driver housing wall while the shaft contacts the potentiometer;
- wherein the driver housing base portion includes a top portion with a flat surface and a top opening for at least a first wire to extend to the LED driver assembly; and
- an insulating film positioned between a bottom surface of the driver housing's top portion and a top portion of the LED driver assembly.
U.S. Patent No. 10,465,888 - "LED Lighting Methods and Apparatus"
- Patent Identification: U.S. Patent No. 10,465,888, "LED Lighting Methods and Apparatus," issued November 5, 2019.
The Invention Explained
- Problem Addressed: Like the '832 patent, this invention addresses the need to adjust outdoor lighting fixtures in the field without disassembling them and compromising their watertight integrity (’888 Patent, col. 1:40-50).
- The Patented Solution: The '888 patent claims a similar user-adjustable, watertight LED fixture but focuses on a specific sealing mechanism: a "circular seal having a hole in the center" (’888 Patent, Abstract; Compl. ¶22). The shaft of the external dimming knob passes through this circular seal to engage the internal potentiometer, with the circular seal providing the watertight barrier between the knob and the housing (’888 Patent, col. 2:10-21).
- Technical Importance: The invention provides a specific and robust mechanical configuration for sealing an external adjustment knob, contributing to the reliability of field-adjustable outdoor luminaires (Compl. ¶22).
Key Claims at a Glance
- The complaint asserts at least Claim 1 (Compl. ¶97). Its essential elements are:
- An LED light base assembly comprising:
- a driver housing including a base portion with a control knob opening in a wall;
- an LED driver assembly including a potentiometer;
- a circular seal having a hole in the center;
- a dimming control knob with a shaft extending through the hole in the circular seal and the control knob opening to physically contact the potentiometer, with the circular seal sealing between the knob and the housing;
- wherein the base portion of the driver housing includes a top portion with a flat surface and an opening for at least a first wire; and
- an insulating film positioned between the top portion of the driver housing and the LED driver assembly.
U.S. Patent No. 10,571,101 - "LED Lighting Methods and Apparatus"
- Patent Identification: U.S. Patent No. 10,571,101, "LED Lighting Methods and Apparatus," issued February 25, 2020.
Technology Synopsis
The patent claims particular configurations of components for an outdoor lighting fixture, including a specifically designed housing, an LED, a driver circuit, an on-board mechanism for manually adjusting brightness, a water seal, and an internal insulating layer (Compl. ¶23). These elements are configured to allow a user to adjust the fixture's output in the field without endangering its integrity (Compl. ¶23).
Asserted Claims
Claims 1-4, 6, 8-13, and 18 are asserted (Compl. ¶117).
Accused Features
The complaint accuses the D5A1-aW, D5A2-aW, D6B1-aW/LGLSP0807IP, and other product families of infringement (Compl. ¶115).
U.S. Patent No. 10,920,971 - "LED Lighting Methods and Apparatus"
- Patent Identification: U.S. Patent No. 10,920,971, "LED Lighting Methods and Apparatus," issued February 16, 2021.
Technology Synopsis
This patent claims a ground-anchorable fixture that includes a monolithic housing containing both an LED and its driver circuit (Compl. ¶24). The fixture also includes an on-board mechanism for manually adjusting the brightness and a mechanism that allows the beam angle of the emitted light to be changed (Compl. ¶24).
Asserted Claims
Claims 1 and 7-9 are asserted (Compl. ¶128).
Accused Features
The complaint accuses the D5A1-aW, D5A2-aW, and F5A1-aW products of infringement (Compl. ¶127).
U.S. Patent No. 10,598,358 - "LED Lighting Methods and Apparatus"
- Patent Identification: U.S. Patent No. 10,598,358, "LED Lighting Methods and Apparatus," issued March 24, 2020.
Technology Synopsis
The patent claims an LED light assembly that includes an LED light source and a mechanism for adjusting the light's beam angle (Compl. ¶25). The mechanism comprises a beam angle changing lens, a movable element holder, a holder guide, and an external beam angle changing dial that extends over and is secured to the main fixture body (Compl. ¶25).
Asserted Claims
At least Claim 1 is asserted (Compl. ¶140).
Accused Features
The complaint accuses the SP-AP models (also marketed as OSFL-IA and/or LGLSP0802AP) of infringement (Compl. ¶139).
III. The Accused Instrumentality
Product Identification
The complaint names several families of accused products, with the "'832-888 Accused Products" identified as the LGLSP0802AP, LGLFL0803AC, and LGFL0803BC families of landscape lights (Compl. ¶75). Additional product models are accused of infringing the other patents-in-suit (Compl. ¶¶115, 127, 139).
Functionality and Market Context
The accused products are described as outdoor LED landscape lights that are "essentially knock-offs" of WAC Lighting's patented products (Compl. ¶26). The complaint alleges they include an LED driver system with an integrated circuit board, a potentiometer connected to the board, and an external dimming control knob that enables adjustment of the wattage level (Compl. ¶¶79-80, 99-100). A visual in the complaint shows an accused Lumien product with an external knob for adjusting wattage between 3.5W and 18W (Compl. p. 11). The complaint alleges that by copying WAC's product design, Lumien has enjoyed substantial sales and grown market share at WAC's expense (Compl. ¶92).
IV. Analysis of Infringement Allegations
'832 Patent Infringement Allegations (Claim 2)
| Claim Element (from Dependent Claim 2) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a driver housing including a base portion including a control knob opening in a wall of the base portion | The accused products have a part that houses the driver, and its base portion has an opening for a dimming knob. | ¶79 | col. 2:12-14 |
| an LED driver assembly including a potentiometer | The accused products operate with an LED driver system with an integrated circuit board and a potentiometer. | ¶80 | col. 2:14-15 |
| a seal | The accused products include "a seal" in the base part. | ¶81 | col. 2:15-16 |
| a dimming control knob including a shaft portion, said seal being positioned between a rear side of said dimming knob and a surface of said wall of the base portion...said seal providing a water tight seal... | The accused products have a dimming control knob with a shaft portion that interfaces with the potentiometer, and a water tight seal positioned between the knob's rear side and the driver housing exterior. | ¶82 | col. 2:16-21 |
| wherein the driver housing base portion...includes a top portion including a flat surface, said flat surface including a top opening through which at least a first wire extends... | The base part of the accused products has an opening in its top flat surface for at least one electrical wire to extend to the top part of the luminaire where the LED is housed. | ¶83 | col. 2:22-26 |
| and an insulating film covering a top portion of said LED driver assembly, said insulating film being positioned between a bottom surface of the top portion of the LED driver housing and the top portion of said LED driver assembly... | The accused products have an insulating film covering the driver's integrated circuit board, positioned between the bottom surface of the housing's top portion and the top face of the circuit board. | ¶84 | col. 2:27-33 |
- Identified Points of Contention:
- Scope Questions: A potential issue is whether the complaint's allegations, which map to dependent Claim 2, also suffice to state a claim for infringement of independent Claim 1, as the complaint broadly asserts "at least claim 1" (Compl. ¶77).
- Technical Questions: A factual question for the court will be whether the component identified as "a seal" in the accused product (Compl. ¶81) is structurally and functionally equivalent to the seal required by the claim, particularly in its positioning and ability to provide "a water tight seal" during operation of the knob (Compl. ¶82).
'888 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a driver housing including a base portion including a control knob opening, said control knob opening being in a wall of the base portion | The accused products have a part housing the driver, with a base portion that has an opening for a dimming knob. | ¶99 | col. 2:12-15 |
| an LED driver assembly including a potentiometer | The accused products operate with an LED driver system that includes an integrated circuit board and a potentiometer. | ¶100 | col. 2:15-16 |
| a circular seal having a hole in the center of the circular seal | The accused products include a "circular seal having a hole in the center of the circular seal" in the base part. | ¶101 | col. 2:17-18 |
| a dimming control knob including a shaft, said shaft extending through the hole in the center of said circular seal...said circular seal sealing between the dimming control knob and the base portion of the driver housing | The accused products have a dimming control knob with a shaft that extends through the seal and interfaces with the potentiometer, with the seal positioned between the knob's rear side and the driver housing. | ¶102 | col. 2:19-25 |
| wherein the base portion of the driver housing...includes a top portion including a flat surface...including an opening through which at least a first wire extends... | The base part of the accused products has an opening in its top flat surface for at least one electrical wire to pass to the luminaire's top part where the LED is housed. | ¶103 | col. 2:26-30 |
| and an insulating film positioned between the top portion of the driver housing and the LED driver assembly | The accused products have an insulating film over the driver's integrated circuit board, positioned between the bottom surface of the housing's top portion and the top face of the circuit board. | ¶104 | col. 2:31-33 |
- Identified Points of Contention:
- Scope Questions: The primary dispute may center on the term "circular seal." Infringement will depend on whether the accused product's sealing component meets the structural requirements of being "circular" and "having a hole in the center."
- Technical Questions: An evidentiary question will be whether the seal in the accused products operates to seal "between the dimming control knob and the base portion of the driver housing" in the manner claimed, a key functional requirement of the invention.
V. Key Claim Terms for Construction
The Term: "LED light base assembly"
- Context and Importance: This term appears in the preamble of the asserted independent claims of both the '832 and '888 patents. Its construction is critical because the Defendant may argue that its fully-assembled lighting fixtures are not merely a "base assembly." Practitioners may focus on this term because the complaint anticipates this dispute, arguing the accused products "have components that comprise a base part of a luminaire" (Compl. ¶¶78, 98).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification refers to the "lower LED light assembly 565 also referred to as a LED light base assembly 565" (’832 Patent, col. 6:65-col. 7:1), which encompasses the entire lower portion of the fixture, including the driver housing, control knob, and mounting hardware, suggesting a broad scope.
- Evidence for a Narrower Interpretation: The use of the term "assembly" in conjunction with a list of specific components could support a narrower reading that requires a distinct, modular unit, potentially different from an integrated single-piece luminaire.
The Term: "circular seal"
- Context and Importance: This term is a central limitation of Claim 1 of the '888 Patent and distinguishes it from the more general "seal" claimed in the '832 Patent. Infringement of the '888 patent hinges on whether the accused product's component meets this specific structural definition.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses embodiments using O-rings, which are functionally circular seals (e.g., '888 Patent, Fig. 6B, item 546). This could support a construction that covers any sealing element providing a 360-degree seal around the knob's shaft, regardless of its specific cross-sectional shape.
- Evidence for a Narrower Interpretation: The claim language "a circular seal having a hole in the center" could be construed narrowly to mean a flat, washer-shaped gasket that is itself circular, as distinct from an O-ring which is toroidal. This interpretation would focus on the shape of the seal object itself, not just the function it performs.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating Defendant sells the accused products to distributors (e.g., AQ Lighting, Sitelight Ld, Inc.) with the knowledge and intent that they will resell them, thereby directly infringing the patents-in-suit (Compl. ¶¶86, 106, 118, 130, 150). Knowledge is alleged based on the prior N.D. Ga. litigation and the ITC Investigation (Compl. ¶¶87, 107, 119, 131, 151).
- Willful Infringement: Willfulness is alleged for all five patents. The claims are based on Defendant's alleged knowledge of the '832 and '888 patents since at least 2019 from the prior litigation and its subsequent alleged breach of the settlement agreement (Compl. ¶¶91, 111). For the remaining patents, willfulness is based on knowledge gained through the ITC Investigation (Compl. ¶¶123, 135, 154-155).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold issue will be contractual: did the Defendant’s alleged post-settlement sales constitute a material breach of the 2020 Settlement Agreement? The answer may determine whether the release from liability for the '832 and '888 patents was voided, re-opening those patents to infringement allegations.
- A central question for infringement will be one of structural definition: can the complaint establish that the sealing components in the accused products meet the specific claim limitations, particularly the distinction between the general "seal" of the ’832 patent and the more specific "circular seal" of the ’888 patent?
- A key issue for damages will be willfulness: given the extensive litigation history alleged in the complaint, including a prior settlement agreement and an ITC consent order, the court will need to evaluate whether Defendant's continued sales constituted an unjustifiably high risk of infringement sufficient to support enhanced damages.