DCT

2:25-cv-00121

Signify North America Corp v. ETi Solid State Lighting Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:25-cv-00121, N.D. Ga., 05/02/2025
  • Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Georgia because Defendant ETI Solid State Lighting Inc. recently relocated its headquarters, including warehousing and distribution facilities, to Flowery Branch, Georgia, and conducts sales activities within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s various LED lighting products, including recessed downlights, wall packs, and wrap lights, infringe nine patents related to the mechanical design, thermal management, user configurability, and power supply architecture of LED fixtures.
  • Technical Context: The lawsuit concerns foundational technologies in the LED lighting market, which has largely displaced older incandescent and fluorescent technologies due to its energy efficiency and design flexibility.
  • Key Procedural History: The complaint alleges a decade-long history of interaction between the parties, beginning with a meeting in 2015 to discuss ETI's alleged infringement. Plaintiff further alleges providing specific notice of infringement, including infringement analyses for several of the patents-in-suit, in letters dated January 20, 2021, and July 26, 2023, which forms the basis for the willful infringement allegations.

Case Timeline

Date Event
2004-01-28 Earliest Priority Date for ’703 Patent
2006-02-10 Earliest Priority Date for ’437 Patent
2007-09-21 Earliest Priority Date for ’978, ’253, ’321 Patents
2009-03-31 ’437 Patent Issued
2010-02-02 ’703 Patent Issued
2011-04-21 Earliest Priority Date for ’280, ’727 Patents
2014-07-29 ’978 Patent Issued
2015-01-01 First meeting alleged between Plaintiff and Defendant
2016-02-19 Earliest Priority Date for ’682, ’588 Patents
2017-06-13 ’727 Patent Issued
2017-07-18 ’253 Patent Issued
2019-11-12 ’280 Patent Issued
2019-12-10 ’682 Patent Issued
2020-04-28 ’321 Patent Issued
2021-01-20 Defendant allegedly received notice of ’253 and ’703 Patents
2022-08-09 ’588 Patent Issued
2023-07-26 Defendant allegedly received notice of ’978, ’321, ’280, ’588, ’437 Patents
2025-05-02 Complaint Filing Date

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

U.S. Patent No. 8,789,978 - “Light Emitting Diode Recessed Light Fixture”, issued July 29, 2014

The Invention Explained

  • Problem Addressed: The complaint does not specify the problem from the patent's background, but the invention's context suggests the technical challenge of creating a self-contained, all-in-one LED lighting module that can be easily installed into the millions of existing recessed light fixture housings designed for traditional incandescent bulbs (Compl. ¶18).
  • The Patented Solution: The patent describes a "downlight module" that integrates the essential components for an LED retrofit: a heat sink for thermal management, the LED light source, a driver to power the LED, and an adapter with a standard Edison-based screw-in connector (Compl. ¶18, ¶48). The claims specify a particular spatial arrangement of these components, including a driver disposed "above the upper surface of the heat sink" and mounting devices to secure the module inside a legacy fixture housing (’978 Patent, col. 21:55-57).
  • Technical Importance: This integrated module design was significant in enabling the widespread residential and commercial transition to energy-efficient LED lighting by simplifying the retrofitting process for electricians and consumers.

Key Claims at a Glance

  • The complaint asserts independent claim 9 (Compl. ¶46).
  • Essential elements of claim 9 include:
    • A downlight module comprising a heat sink with upper and lower surfaces.
    • At least one LED thermally coupled to the heat sink.
    • A housing coupled to the lower surface of the heat sink, defining a cavity.
    • A plurality of mounting devices on opposite side surfaces of the module.
    • A driver disposed above the upper surface of the heat sink and electrically coupled to the LED.
    • An adapter with an Edison based connector at one end, connected to the driver at the other.
    • The LED emits light through the cavity.
  • The complaint reserves the right to assert additional claims (Compl. ¶47).

U.S. Patent No. 9,709,253 - “Light Emitting Diode Recessed Light Fixture”, issued July 18, 2017

The Invention Explained

  • Problem Addressed: This patent addresses a similar problem of retrofitting LED modules into existing recessed housings, but focuses more specifically on the electrical and mechanical interface between the power adapter and the main body of the lighting module (Compl. ¶19).
  • The Patented Solution: The invention claims a downlight module where the adapter has an Edison screw-in plug at one end and a "plug connector" at the opposing end (’253 Patent, col. 15:53-56). This plug connector is configured to both "electrically couple and mechanically couple the adapter to the driver," suggesting a detachable, modular connection that simplifies installation and replacement (Compl. ¶68).
  • Technical Importance: The use of a dedicated plug connector between the Edison adapter and the driver allows the main light module to be installed or removed without having to screw or unscrew the entire assembly from the ceiling socket, streamlining the installation process.

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶66).
  • Essential elements of claim 1 include:
    • A downlight module for use with a recessed housing.
    • A heat sink with an inner surface.
    • At least one LED light source coupled to the inner surface of the heat sink.
    • A driver electrically coupled to the LED light source.
    • An adapter comprising an Edison screw-in plug at one end and a plug connector at an opposing end.
    • The plug connector is configured to electrically and mechanically couple the adapter to the driver.
  • The complaint reserves the right to assert additional claims (Compl. ¶67).

U.S. Patent No. 10,634,321 - “Light Emitting Diode Recessed Light Fixture”, issued April 28, 2020

  • Technology Synopsis: The ’321 Patent describes an LED downlight module capable of producing a combined light output from multiple LEDs with different color temperatures. This allows the user to select or create different shades of white light (e.g., warm white, cool white) from a single fixture (Compl. ¶20, ¶85, ¶87).
  • Asserted Claims: Independent claim 8 is asserted (Compl. ¶83).
  • Accused Features: The "Color Preference Downlight" is accused of infringing by allegedly incorporating a first LED of a first color temperature and a second LED of a second color temperature to provide a combined output light (Compl. ¶30, ¶87).

U.S. Patent No. 10,506,682 - “Configurable Lighting System”, issued December 10, 2019

  • Technology Synopsis: The ’682 Patent relates to a luminaire with a control module that uses a multi-position switch coupled to a plurality of resistors. The position of the switch selects a particular resistance, which in turn determines the current level supplied to the light source, thereby controlling its output (Compl. ¶21, ¶101).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶99).
  • Accused Features: The "LED Spin Light" and "Color Preference Downlight" are accused of infringing by allegedly using a control module with a multi-position switch and resistive components to configure the light output (Compl. ¶30, ¶31, ¶103-106).

U.S. Patent No. 11,408,588 - “Configurable Lighting System”, issued August 9, 2022

  • Technology Synopsis: The ’588 Patent describes a lighting device with a first set of LEDs at a first color temperature and a second set at a second color temperature. A switch controls the LEDs to produce a third, intermediate color temperature by mixing light from a portion of both sets of LEDs (Compl. ¶22, ¶121).
  • Asserted Claims: Independent claim 21 is asserted (Compl. ¶119).
  • Accused Features: The "LED Spin Light" and "LED Under Cabinet Light" are accused of infringing by allegedly using a switch to control warm white and cool white LEDs to produce mixed color temperatures in between (Compl. ¶31, ¶34, ¶123, ¶126).

U.S. Patent No. 10,473,280 - “Wall Pack Light Fixture”, issued November 12, 2019

  • Technology Synopsis: The ’280 Patent addresses the mechanical design of outdoor wall pack fixtures. It claims a housing comprising a "mounting box" and a "cover box that fastens to the mounting box," with each forming distinct first and second cavities, and includes specific details about sealing surfaces and component placement (Compl. ¶23, ¶137; ’280 Patent, Abstract). The design appears intended to simplify installation and improve weather resistance.
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶135).
  • Accused Features: The "Wall Pack Light" and "VersaPak Wall Pack" are accused of infringing by allegedly incorporating the claimed two-part housing structure with distinct mounting and cover boxes (Compl. ¶32, ¶33, ¶139-141).

U.S. Patent No. 9,677,727 - “Wall Pack Light Fixture”, issued June 13, 2017

  • Technology Synopsis: The ’727 Patent also pertains to the mechanical structure of a wall pack light fixture, claiming a housing with a mounting box and a cover box. A key limitation is the dimensional relationship where the cover box has a "second length that is longer than the first length" of the mounting box (Compl. ¶24, ¶160).
  • Asserted Claims: Independent claim 9 is asserted (Compl. ¶158).
  • Accused Features: The "VersaPak Wall Pack" is accused of infringing by allegedly having a cover box that is longer than its mounting box, as depicted in photographs in the complaint (Compl. ¶33, ¶164).

U.S. Patent No. 7,654,703 - “Directly Viewable Luminaire”, issued February 2, 2010

  • Technology Synopsis: The ’703 Patent focuses on thermal management in luminaires. It claims a housing with a first internal compartment for the light-emitting diodes and a second, "thermally separated" internal compartment for the electronic driver components, with both compartments configured to dissipate heat (Compl. ¶25, ¶181).
  • Asserted Claims: Independent claim 17 is asserted (Compl. ¶179).
  • Accused Features: The "Wall Pack Light," "VersaPak Wall Pack," and "LED Under Cabinet Light" are accused of infringing by allegedly having physically and thermally separate compartments for the LEDs and the driver electronics (Compl. ¶32, ¶33, ¶34, ¶183, ¶186).

U.S. Patent No. 7,511,437 - “Methods and Apparatus for High Power Factor Controlled Power Delivery Using a Single Switching Stage per Load”, issued March 31, 2009

  • Technology Synopsis: The ’437 Patent describes a power supply circuit for a lighting apparatus. The invention is a "first single switching stage" configured to provide both power factor correction and power to the LED load "without monitoring or regulating a first load current or a first load voltage," which distinguishes it from many conventional power supply designs (Compl. ¶26, ¶200).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶198).
  • Accused Features: The "4 FT EL Install Wrap Light" is accused of infringing by allegedly using a driver circuit with a single switching stage topology that provides power factor correction without load monitoring, as evidenced by circuit schematics provided in the complaint (Compl. ¶35, ¶203-208).

III. The Accused Instrumentality

Product Identification

  • The complaint accuses multiple product families, including the "Color Preference Downlight," "LED Spin Light," "Outdoor Wall Pack Light," "VersaPak Adjustable Wall Pack," "Adjustable LED Under Cabinet Light," and "4 FT EL Install Wrap Light" (Compl. ¶¶ 30-35).

Functionality and Market Context

  • The accused products represent a range of common LED lighting fixtures for residential and commercial use.
    • The Color Preference Downlight is a recessed lighting module designed to retrofit into existing ceiling cans. Its key accused functionality includes its all-in-one construction with an Edison-base adapter and its ability to produce light at selectable color temperatures (Compl. ¶30, ¶49, ¶87). An image of the product's packaging highlights its "Color Preference" and "Nightlight Trim" features (Compl. p. 23).
    • The LED Spin Light is a surface-mount fixture that also features selectable color temperatures, allegedly implemented via a multi-position switch and associated control circuitry (Compl. ¶31, ¶103).
    • The Wall Pack products are outdoor lighting fixtures. Their accused functionality centers on their mechanical housing, which allegedly comprises thermally and physically separate compartments for the LEDs and driver electronics, and specific claimed geometries of the mounting and cover boxes (Compl. ¶32, ¶33, ¶139, ¶162, ¶183).
    • The 4 FT EL Install Wrap Light is a linear fixture whose accused functionality relates to its internal power supply, which allegedly employs a single-stage driver circuit for power factor correction (Compl. ¶35, ¶203).

IV. Analysis of Infringement Allegations

8,789,978 Patent Infringement Allegations

Claim Element (from Independent Claim 9) Alleged Infringing Functionality Complaint Citation Patent Citation
a heat sink comprising an upper surface and a lower surface The accused downlight incorporates a metallic, finned structure identified as a heat sink, with distinct upper and lower surfaces. An annotated photograph shows the alleged upper and lower surfaces of the heat sink (Compl. p. 24). ¶50 col. 4:5-8
at least one light emitting diode (LED) thermally coupled to the heat sink An array of LEDs is mounted on a board that is physically attached to the lower surface of the heat sink, allowing for thermal transfer. A photograph shows the LED light source in relation to the heat sink (Compl. p. 25). ¶51 col. 4:9-12
a housing defining a cavity therein, the housing being coupled to the lower surface of the heat sink A plastic or composite structure is attached to the heat sink, enclosing the LEDs and forming the visible part of the fixture. ¶52 col. 4:13-15
a plurality of mounting devices coupled to an external surface of the downlight module The product includes spring-loaded metal clips on its exterior, designed to secure the module within a recessed ceiling can. ¶53 col. 4:19-21
a driver disposed above the upper surface of the heat sink, the driver being electrically coupled to the at least one LED Electronic driver circuitry is located on a circuit board positioned on top of the heat sink structure. A photograph shows the driver board located above the heat sink (Compl. p. 27). ¶54 col. 4:26-29
an adapter including an Edison based connector at one end configured to be electrically coupled to an Edison based socket and connected to the driver at an opposing end The product includes a pigtail adapter with a standard Edison screw base at one end and a wire connecting to the driver at the other. An annotated photograph shows the Edison connector and its connection to the (hidden) driver (Compl. p. 29). ¶55 col. 4:30-34

Identified Points of Contention

  • Scope Questions: A potential dispute may arise over the term "disposed above." The parties may contest whether the accused driver's location relative to the heat sink meets the specific spatial orientation required by the claim, particularly if the components are not in a simple vertical stack.
  • Technical Questions: What evidence demonstrates that the alleged "mounting devices" are "disposed on opposite side surfaces" as claimed? The precise placement and symmetry of the mounting clips relative to the module's body could become a point of factual dispute.

9,709,253 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A downlight module for use with a recessed housing located above a ceiling The accused product is marketed and sold as a recessed downlight module for installation in ceiling fixtures. The product packaging explicitly labels it a "Recessed Downlight" (Compl. p. 35). ¶69 col. 1:16-18
a heat sink, wherein the heat sink includes an inner surface The product incorporates a structure for heat dissipation that has an inner surface to which the LEDs are coupled. A photograph shows the alleged inner surface of the heat sink (Compl. p. 36). ¶70 col. 4:18-20
at least one LED light source coupled to the inner surface of the heat sink, wherein the at least one LED light source is oriented to emit light out of the downlight module An array of LEDs is mounted to the inner surface of the heat sink and positioned to direct light downwards, out of the fixture. ¶71 col. 4:21-24
a driver electrically coupled to the at least one LED light source The accused product contains a circuit board with electronic components, identified as the driver, that is electrically connected to the LED array. ¶72 col. 4:25-26
an adapter comprising an Edison screw-in plug at one end of the adapter and a plug connector at an opposing end of the adapter The product is supplied with a power adapter that has an Edison screw base on one end and a small plastic connector on the other end of a flexible wire. An annotated image shows the Edison screw-in plug and the plug connector (Compl. p. 38). ¶73 col. 4:27-31
wherein the plug connector is configured to electrically couple and mechanically couple the adapter to the driver The plug connector on the adapter is designed to mate with a corresponding socket connected to the driver, establishing both an electrical path and a physical connection. ¶73 col. 4:31-34

Identified Points of Contention

  • Scope Questions: The central issue for this patent may be the construction of "mechanically couple." Does the simple push-in wire connector shown in the complaint's photographs provide sufficient structural connection to satisfy the "mechanically couple" limitation, or does the claim require a more robust, load-bearing, or locking connection?
  • Technical Questions: What is the nature of the interface between the accused product's adapter and driver? Analysis may focus on whether the connection provides any mechanical stability or is merely an electrical pass-through.

V. Key Claim Terms for Construction

For the ’978 Patent

  • The Term: "a driver disposed above the upper surface of the heat sink" (Claim 9)
  • Context and Importance: This term defines a specific spatial relationship between two key components. The infringement analysis will depend on whether the accused product's physical layout meets this limitation. Practitioners may focus on this term because the defendant could argue its driver is merely adjacent to, or in a different plane than, the "upper surface" of the heat sink, rather than strictly "above" it.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification may use the term "above" in a general sense to mean "on the opposite side of the heat sink from the LEDs" without requiring a strict vertical alignment. Language such as "the driver is disposed generally above the heat sink" could support this.
    • Evidence for a Narrower Interpretation: The patent figures (’978 Patent, e.g., Fig. 15) may consistently show the driver (315) positioned in a clear vertical relationship directly over the heat sink (310), which would suggest a more constrained, stacked configuration is required.

For the ’253 Patent

  • The Term: "plug connector is configured to ... mechanically couple the adapter to the driver" (Claim 1)
  • Context and Importance: This limitation requires more than just an electrical connection; it requires a mechanical one. The viability of the infringement claim hinges on whether the accused product's simple wire-to-board connector satisfies this dual requirement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: If the specification describes the purpose of the connection simply as "connecting the adapter to the driver" without elaborating on mechanical requirements, it could support an argument that any physical connection that holds the wires in place qualifies.
    • Evidence for a Narrower Interpretation: The patent's description or figures (’253 Patent, e.g., Fig. 16) may depict a connector (1520) with features like locking tabs, a defined housing, or strain relief that provide structural integrity. Such embodiments would support an argument that "mechanically couple" implies a connection that provides support against pulling or movement beyond simply maintaining electrical contact.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges both induced and contributory infringement for each asserted patent. Inducement is based on allegations that ETI sells the accused products with knowledge of the patents and with the intent that customers will use them in an infringing manner, supported by ETI's marketing, instructions, and technical support (Compl. ¶59, ¶76). Contributory infringement is based on allegations that the accused products are not staple articles of commerce, have no substantial non-infringing uses, and are especially made or adapted for use in an infringing manner (Compl. ¶60, ¶77).

Willful Infringement

  • Willfulness is alleged for all patents-in-suit. The complaint bases this on ETI's alleged long-standing awareness of Signify's patent portfolio since a 2015 meeting, and more specifically on ETI's alleged receipt of notice letters with infringement analyses for the asserted patents on January 20, 2021, and July 26, 2023 (Compl. ¶36, ¶37, ¶38, ¶41, ¶61). Continued sales after these alleged notices form the core of the willfulness claim.

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

  • A core issue will be one of claim scope and construction: Can claim terms describing specific spatial and mechanical relationships, such as "disposed above" a heat sink (’978 Patent) and a connector that "mechanically couple[s]" (’253 Patent), be construed broadly enough to read on the physical designs of the accused products? The outcome of claim construction on these seemingly simple terms may be dispositive for several of the asserted patents.
  • A central evidentiary question will be one of technical proof across a diverse portfolio: Can the plaintiff demonstrate, with sufficient technical evidence, that ETI's various product families meet every limitation of the asserted claims across nine different patents covering distinct aspects of LED lighting technology, from mechanical housings and thermal management to complex power electronics?
  • A key question for damages will be willfulness: Given the complaint's detailed allegations of pre-suit notice dating back several years, including the provision of infringement analyses, what evidence will the defendant present to counter the claim of willful infringement and establish a good-faith belief of non-infringement or invalidity for each of the nine asserted patents?