Blackbird Tech LLC v. Tadd LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Blackbird Tech, LLC d/b/a Blackbird Technologies (Delaware)
  • Defendant: Tadd, LLC (Illinois)
  • Plaintiff’s Counsel: Stamoulis & Weinblatt LLC
• Case Identification: 1:19-cv-03784, D. Del., 10/19/2016
• Venue Allegations: Plaintiff alleges venue is proper because Defendant transacts business and offers for sale in the District of Delaware products that allegedly infringe the patent-in-suit.
• Core Dispute: Plaintiff alleges that Defendant’s linear LED lighting products, designed for retrofitting existing fluorescent light fixtures, infringe a patent related to low-voltage, energy-efficient lighting systems.
• Technical Context: The technology concerns retrofitting conventional fluorescent light fixtures with low-power LED strips to provide energy-efficient alternative lighting for after-hours, emergency, or low-light scenarios.
• Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patent-in-suit.

Case Timeline

Date	Event
2002-12-11	'747 Patent Priority Date
2006-08-08	'747 Patent Issue Date
2016-10-19	Complaint Filing Date

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

U.S. Patent No. 7,086,747 - "Low-Voltage Lighting Apparatus for Satisfying After-Hours Lighting Requirements, Emergency Lighting Requirements, and Low Light Requirements"

• Patent Identification: U.S. Patent No. 7,086,747, "Low-Voltage Lighting Apparatus for Satisfying After-Hours Lighting Requirements, Emergency Lighting Requirements, and Low Light Requirements," issued August 8, 2006.

The Invention Explained

• Problem Addressed: The patent addresses the energy inefficiency of using full-power fluorescent lighting in commercial buildings for after-hours security, maintenance, or emergency egress purposes, which require only minimal illumination (ʼ747 Patent, col. 1:49-64). It also notes the need for low-light environments, such as during presentations, where complete darkness is undesirable (ʼ747 Patent, col. 2:1-11).
• The Patented Solution: The invention is a self-contained, low-voltage LED lighting apparatus designed to be easily retrofitted onto the ballast cover of a standard fluorescent light fixture. The apparatus contains a circuit board with LEDs, which is connected to a battery and a switching circuit. This circuit is in communication with the main wall switch, enabling a control scheme where the low-power LEDs automatically illuminate when the primary fluorescent lights are turned off, and vice-versa, providing an energy-efficient alternative lighting source (ʼ747 Patent, Abstract; col. 6:29-68).
• Technical Importance: The described invention provides a method to integrate a low-power, secondary lighting system directly into the ubiquitous infrastructure of existing fluorescent fixtures, potentially offering significant power savings over using the main lamps for secondary lighting needs (ʼ747 Patent, col. 4:56-68).

Key Claims at a Glance

• The complaint specifically references independent claim 12 as being infringed (Compl. ¶13).
• The essential elements of independent claim 12 are:
  • An energy-efficient lighting apparatus for retrofit with an existing light fixture having a ballast cover, comprising:
  • a housing having an attachment surface and an illumination surface;
  • a plurality of illumination surface holes in the illumination surface;
  • a circuit board comprising a plurality of light-emitting diodes, positioned so the diodes protrude through the illumination surface holes; and
  • a fastening mechanism for securing the attachment surface of the lighting apparatus to the illumination surface, wherein the apparatus is coupled to a wall switch and the illumination of the LEDs is controllable based upon the position of the wall switch.
• The complaint alleges infringement of "one or more of the claims," reserving the right to assert others (Compl. ¶10).

III. The Accused Instrumentality

Product Identification

The complaint identifies the accused instrumentalities as "linear LED lighting products," including but not limited to those listed in an attached Exhibit B, which was not included in the filing (Compl. ¶10).

Functionality and Market Context

The complaint describes the accused products as "components of an energy-efficient lighting apparatus for retrofit with an existing light fixture having a ballast cover" (Compl. ¶13). The core of the infringement allegation is that when these components are "coupled to a wall switch," the resulting structure infringes the patent (Compl. ¶13). This suggests the products are sold as retrofit kits intended for installation into existing light fixtures. The complaint does not provide further technical detail on the specific operation of the accused products. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references an exemplary claim chart in Exhibit C, which was not provided with the filed document (Compl. ¶10). The infringement theory, based on the narrative in the complaint, is that the Defendant makes, uses, sells, or imports "linear LED lighting products" that function as components for a retrofit lighting system (Compl. ¶10, ¶13). The complaint alleges that these products, when installed as intended and "coupled to a wall switch," form an apparatus that meets the limitations of claim 12 of the ʼ747 Patent (Compl. ¶13). The complaint further alleges that Defendant's customers directly infringe the patent by performing this installation (Compl. ¶14).

• Identified Points of Contention:
  • Scope Questions: A central issue may arise from an apparent drafting error in asserted claim 12. The claim requires "a fastening mechanism for securing the attachment surface of the lighting apparatus to the illumination surface," which would mean attaching the device to itself (ʼ747 Patent, col. 12:41-44). This contradicts the specification, which describes securing the apparatus to the fixture's "ballast cover" (ʼ747 Patent, col. 3:45-48). The case may turn on whether a court will correct this as an obvious scrivener's error or if it renders the claim indefinite or not infringed as written.
  • Technical Questions: What evidence demonstrates that the accused products, when installed, are "controllable based upon the position of the wall switch" as required by claim 12? (ʼ747 Patent, col. 12:44-47). The complaint provides no details on the control circuitry or operational logic of the accused products to substantiate this functional limitation.
  • Technical Questions: The complaint describes the accused products as "components" of a larger apparatus (Compl. ¶13). A key question for the court will be whether the "linear LED lighting products" as sold by the Defendant meet all limitations of the apparatus claim, or if infringement only occurs after assembly and installation by a third party, which would shift the primary legal focus to theories of indirect infringement.

V. Key Claim Terms for Construction

• The Term: "controllable based upon the position of the wall switch"

  • Context and Importance: This limitation defines the core interactive function of the patented apparatus. Practitioners may focus on this term because the infringement analysis will depend on whether the accused product's control logic, once installed, falls within the scope of this phrase.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue that the plain language does not specify the manner of control, only that the LED illumination is dependent on the wall switch's position in some way.
    • Evidence for a Narrower Interpretation: The specification consistently describes a particular inverse-logic control scheme: the switching circuit "couples the battery to the LEDs" when the circuit is "not receiving AC voltage" (i.e., wall switch is open), and does not couple them when it is receiving AC voltage (i.e., wall switch is closed) (ʼ747 Patent, col. 6:33-40, 6:55-68). A party may argue that this disclosed embodiment limits the claim's scope to this specific functionality.

• The Term: "a housing having an attachment surface and an illumination surface"

  • Context and Importance: The physical structure of the accused "linear LED lighting products" must map onto this claimed element. The definition of "housing" will be critical to determining if the accused products have the claimed structure.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term "housing" is general and could be construed to cover a wide variety of physical structures that enclose, carry, or support the claimed circuit board.
    • Evidence for a Narrower Interpretation: The patent figures depict a distinct plastic housing (528) that substantially encloses the circuit board (511) and has defined surfaces (ʼ747 Patent, Fig. 5; col. 9:11-17). A party could argue the term should be limited to a more structured enclosure rather than a simple support strip.

VI. Other Allegations

• Indirect Infringement: The complaint pleads contributory infringement for conduct occurring after service of the complaint, alleging the accused products are a "material part of the claimed invention" and not a "staple article or commodity of commerce suitable for substantial noninfringing use" (Compl. ¶11, ¶15). The complaint also lays a factual predicate for induced infringement by alleging that "Defendant's customers, and others, directly infringe" by coupling the products to a wall switch (Compl. ¶14).
• Willful Infringement: The basis for willfulness is alleged post-suit knowledge. The complaint asserts that "Defendant will have had actual knowledge of the '747 patent from the date of its receipt of the Complaint" (Compl. ¶12). Plaintiff requests enhanced damages pursuant to 35 U.S.C. § 284 (Compl. ¶D, p. 5).

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

• A core issue will be one of claim correction: can the apparent scrivener's error in claim 12, which recites securing the device to its own illumination surface, be corrected by the court to reflect the specification's teaching of attachment to a "ballast cover," or will the claim be found invalid or not infringed as written?
• A key evidentiary question will be one of functional mapping: does the accused product's control system, when installed, perform the function of being "controllable based upon the position of the wall switch" as claimed, and is that control limited to the specific inverse-logic operation described in the patent?
• The case may also turn on a question of liability: does the Defendant's product as sold directly infringe the apparatus claim, or will the Plaintiff's case depend on proving indirect infringement based on the foreseeable installation and use of the product by end-user customers?