DCT

1:24-cv-05643

DS Advanced Enterprises v. Cooper Lighting LLC

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-05643, C.D. Cal., 12/21/2023
  • Venue Allegations: Venue is based on allegations that each Defendant regularly conducts business, operates retail stores or warehouses, and derives substantial revenue from activities within the Central District of California, including utilizing the ports of Los Angeles and Long Beach.
  • Core Dispute: Plaintiff alleges that Defendants’ "Halo" brand recessed lighting products infringe a patent related to a versatile mounting apparatus for LED light fixtures suitable for both new construction and retrofit installations.
  • Technical Context: The technology addresses the market for recessed LED downlights, aiming to reduce inventory complexity for distributors and retailers by providing a single product for multiple installation scenarios.
  • Key Procedural History: The complaint alleges that Plaintiff made presentations to Home Depot (in 2019) and Lowe's (in 2020) regarding its technology while the patent application was pending. It also notes a cease and desist letter was sent to Lowe's in May 2023 and references a separate, ongoing lawsuit against Lowe's involving the same patent but different accused products. These events are cited to support allegations of willful infringement.

Case Timeline

Date Event
2018-05-18 Patent Priority Date (No. 62/673,595)
2019-04-02 Plaintiff presentation to Home Depot
2020-01-15 Plaintiff presentation to Lowe's
2021-07-06 U.S. Patent 11,054,118 Issued
2023-05-08 Cease and Desist letter sent to Lowe's
2023-07-27 Earliest Accused Product Launch Date (Amazon)
2023-12-21 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 11,054,118 - “Apparatus to Detachably Attach LED Light Fixture to Ceiling or Recessed Lighting Fixture Housing,” issued July 6, 2021

The Invention Explained

  • Problem Addressed: The patent's background section identifies a problem in the lighting industry where different LED recessed light fixtures are required for "new construction installations and retrofit installations" (’118 Patent, col. 1:12-16). This forces lighting distributors and retailers to carry a larger, more complex inventory (’118 Patent, col. 1:28-31).
  • The Patented Solution: The patent describes a single, versatile LED light fixture apparatus designed to be installable in both scenarios. The apparatus includes two distinct types of mounting hardware: a set of "retrofit clips" for securing the fixture via friction inside an existing recessed housing (a "can"), and a set of "new construction clips" that attach to the fixture's body to clamp onto ceiling material (like drywall) in installations where no housing is present (’118 Patent, Abstract; col. 2:48-56). By embodying both solutions in one product, the invention aims to reduce inventory requirements for distributors (’118 Patent, col. 2:9-13).
  • Technical Importance: The invention's stated advantage is commercial and logistical: it "allows lighting retailers and distributors to carry only one set of inventory, thus saving money and warehouse space" (’118 Patent, col. 2:9-13).

Key Claims at a Glance

  • The complaint asserts infringement of independent claim 1 and dependent claims 2, 3, 4, and 5 (Compl. ¶144-163).
  • Independent Claim 1 requires, in part:
    • An apparatus to detachably attach an LED light fixture
    • a plurality of "retrofit clips" adaptable to attach to the fixture body
    • a plurality of "new construction clips"
    • a plurality of "connecting posts" to hold the new construction clips
    • a "metal housing" to embody a complete fixture
    • a "junction box" with "output wires"
    • a "twist connector" to attach the junction box output wires to the metal housing
    • A "wherein" clause specifying that the "retrofit clips" make a friction fit inside a recessed housing
    • A "wherein" clause specifying that the "new construction clips" are attached to the connecting posts if a recessed housing is not present

III. The Accused Instrumentality

Product Identification

  • The accused products are "Halo" brand recessed LED lighting fixtures, including models #CJB6099FS1EMWR and #CJB4069FS1EMWR (Compl. ¶36, ¶145, ¶147).

Functionality and Market Context

  • The complaint alleges the accused products are marketed as versatile downlights suitable for multiple installation types. For example, a product webpage is cited as boasting that the "canless recessed downlight is designed for use in new construction, remodel and retrofit installations," which is described as a "2-in-1" or "3 in 1" feature (Compl. ¶89, ¶145, p. 30). This marketing directly corresponds to the dual-purpose functionality described in the ’118 Patent. The complaint alleges the products are sold by major national retailers including Home Depot, Lowe's, and Amazon, suggesting a significant commercial presence (Compl. ¶36). A screenshot from a retailer's website shows the product marketed with diagrams for both "Retrofit" and "Canless" installations (Compl. ¶145, p. 30).

IV. Analysis of Infringement Allegations

11,054,118 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a plurality of retrofit clips (102) adaptable to attach with a body of the LED light fixture by screwing them into a plurality of screw holes (110) The accused product allegedly includes spring-like metal clips for friction-fitting the fixture inside an existing recessed housing. ¶145 col. 5:1-16
a plurality of new construction clips (104) The accused product allegedly includes separate, spring-loaded clips with orange tabs, intended for "canless" or new construction installations. A photograph of these distinct clips is provided (Compl. ¶145, p. 26). ¶145 col. 5:17-29
a plurality of connecting posts (106) to hold the new construction clips (104) The fixture housing allegedly has integrated posts or slots onto which the new construction clips are mounted. ¶145 col. 4:49-53
a metal housing (108) to embody a complete fixture (112) The accused product includes a metal body that houses the LED light source and serves as the attachment point for the clips. ¶145 col. 4:50-53
a junction box (116) to hold a plurality of connection wirings, wherein the junction box (116) comprises a plurality of output wires The accused product includes an attached junction box for containing electrical connections, shown with input and output wiring (Compl. ¶145, p. 29). ¶145 col. 4:10-14
a twist connector (118) to attach the output wires of the junction box (116) to the metal housing (108) The complaint alleges the product uses twist connectors (wire nuts) to connect wires from the junction box to the fixture's internal wiring. ¶145 col. 4:13-18
wherein the retrofit clips (102) make a friction fit inside the recessed lighting fixture housing to secure the complete fixture (112) inside The complaint points to marketing materials showing the fixture being installed into an existing housing, relying on the retrofit clips for securement (Compl. ¶145, p. 30). ¶145 col. 4:20-24
wherein the new construction clips (104) are attached to the connecting posts (106) if the recessed lighting fixture housing is not present The complaint alleges the new construction clips are used to clamp the fixture directly to ceiling drywall when no housing is present. ¶145 col. 5:25-29

Identified Points of Contention:

  • Scope Questions: Claim 1 recites an "apparatus" that comprises, among other things, both "retrofit clips" and "new construction clips." A potential dispute is whether an accused product, as sold in a single box containing both sets of clips for alternative use, constitutes the claimed "apparatus," or if the clips are merely optional accessories for creating different, mutually exclusive configurations.
  • Technical Questions: The claim requires a "twist connector (118) to attach the output wires of the junction box (116) to the metal housing (108)." A technical question is whether the accused product's connector attaches the wires to the housing itself (e.g., a physical or electrical bond to the structure) or merely connects them to other wires that lead into the housing. The precise nature of this connection will be a key factual determination.

V. Key Claim Terms for Construction

  • The Term: "apparatus"

  • Context and Importance: The construction of "apparatus" is central to the dispute. Infringement of claim 1 requires the presence of both retrofit and new construction clips. Whether the term covers a "kit" of parts sold together for alternative uses, or requires a single integrated device, will likely be a focal point.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent’s Summary of the Invention lists the full set of components, including both clip types, as comprising the "apparatus" (’118 Patent, col. 2:48-59). The stated purpose of the invention—to reduce retailer inventory by providing a single product for two uses—may support a construction where the "apparatus" is the complete product as sold in the box (’118 Patent, col. 2:9-13).
    • Evidence for a Narrower Interpretation: The "wherein" clauses of claim 1 describe the function of the two clip types in mutually exclusive scenarios (i.e., the new construction clips are used "if the recessed lighting fixture housing is not present"). This could support an argument that the claims define distinct configurations, and an "apparatus" as-used can only be one or the other, not both simultaneously.

  • The Term: "to attach the output wires of the junction box (116) to the metal housing (108)"

  • Context and Importance: This limitation defines a specific connection point and relationship between three claimed components. Practitioners may focus on this term because infringement will depend on the exact physical and electrical pathway in the accused product.

  • Intrinsic evidence for Interpretation:

    • Evidence for a Broader Interpretation: A party could argue "to the metal housing" functionally means connecting to the electrical systems contained within the housing. The patent's Figure 7 shows the connector (118) linking the junction box (116) to the fixture assembly, which is embodied by the metal housing.
    • Evidence for a Narrower Interpretation: The plain language suggests a direct attachment of the output wires to the housing structure itself. The specification states the "twist connector (118) attaches the output wires of the junction box (116) to the metal housing (108)" (’118 Patent, col. 2:60-62). This specificity could be argued to exclude an arrangement where wires are merely connected to other wires that pass into the housing.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendants provide instructions, user manuals, and website content that direct end-users to install the products in a manner that performs the steps of the claimed invention (Compl. ¶198, ¶205, ¶212, ¶219). The complaint includes a screenshot from a product page showing "Easy Installation Options!" for both "Retrofit" and "Canless" scenarios as evidence of such instructions (Compl. ¶145, p. 30).
  • Willful Infringement: Willfulness is alleged against all defendants. The allegations are based on purported pre-suit knowledge of the patent and technology, including: (1) presentations by Plaintiff to Home Depot and Lowe's in 2019 and 2020 describing the technology and noting the patent was pending (Compl. ¶44, ¶60); (2) a cease and desist letter and a prior lawsuit involving the same patent against Lowe's (Compl. ¶92, ¶111); and (3) allegations that Defendants either knew or "should have known" of the patent and the infringing nature of their activities (Compl. ¶112, ¶117).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can the term "apparatus" be construed to read on a product sold as a kit with alternative, mutually exclusive hardware (retrofit clips vs. new construction clips), or does the claim require a single, physically integrated unit? The resolution of this claim construction question may be dispositive.
  • A key evidentiary question will be one of technical precision: does the accused product's use of a twist connector to link junction box wiring with the fixture's internal wiring satisfy the specific limitation that it "attach the output wires... to the metal housing," or is there a functional and structural mismatch that avoids infringement?
  • Finally, a central question regarding damages will be willfulness: given the detailed allegations of pre-suit notice via presentations to Defendants' buying teams, a prior lawsuit, and formal letters, the court will need to determine if any infringement was committed with the knowledge and intent required for enhanced damages.