Seasonal Specialties LLC v. Holiday Designs LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Seasonal Specialties, LLC (Minnesota)
  • Defendant: Holiday Designs, LLC (Delaware/Illinois); Holiday Designs (Cambodia) Co. Ltd (Cambodia); Guangzhou Kingyi Lighting Co., Ltd. (China)
  • Plaintiff’s Counsel: Saul Ewing LLP
• Case Identification: 1:23-cv-14008, N.D. Ill., 09/22/2023
• Venue Allegations: Venue is based on Defendant Holiday US having its principal place of business in the district, while the foreign defendants may be sued in any judicial district.
• Core Dispute: Plaintiff alleges that Defendants’ pre-lit artificial trees with decorative lights infringe patents related to a method and system for switching the lights between a steady-on state and a special visual effect, such as twinkling.
• Technical Context: The technology addresses the market for multi-function decorative LED lighting, aiming to provide selectable lighting modes without the cost and complexity of additional wiring or individually addressable bulbs.
• Key Procedural History: The complaint alleges a prior business relationship in which Plaintiff disclosed its patented technology to Defendants for a potential deal to supply pre-lit trees to Home Depot. After the deal fell through, Plaintiff alleges Defendants copied the technology and offered a similar product for sale. The '265 patent is a continuation of the application that resulted in the '437 patent.

Case Timeline

Date	Event
2014-10-09	Priority Date for ’437 and ’265 Patents
2017-01-24	U.S. Patent No. 9,554,437 Issues
2018-09-18	U.S. Patent No. 10,080,265 Issues
2019-01-01	Plaintiff allegedly introduced to Defendants' factories (approx.)
2020-01-01	Plaintiff allegedly learned Home Depot was not interested (approx.)
2023-09-22	Complaint Filed

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

U.S. Patent No. 9,554,437 - "Decorative Light String Switchable Between Different Illumination States"

• Patent Identification: U.S. Patent No. 9554437, "Decorative Light String Switchable Between Different Illumination States," issued January 24, 2017. (Compl. ¶24).

The Invention Explained

• Problem Addressed: The patent background describes the high cost and complexity of producing decorative light strings that can switch between a steady-on mode and special effects like twinkling, which traditionally required multiple wires to each bulb or expensive addressable control circuits. (’437 Patent, col. 1:37-53).
• The Patented Solution: The invention claims a method to achieve dual-mode functionality using simple two-wire light strings. It employs a special function controller within the bulb that defaults to a special effect (e.g., twinkling). To produce a steady-on appearance, the method involves "periodically interrupt[ing] the flow of current" to the controller at a high frequency. This rapid on-off pulsing continually resets the controller to its initial "steady on" state before it can execute the special effect routine, resulting in a visual appearance of constant illumination. (’437 Patent, Abstract; col. 4:22-49).
• Technical Importance: This approach enables user-selectable lighting modes on low-cost hardware by eliminating the need for additional control wires or sophisticated decoders in each bulb. (Compl. ¶22; ’437 Patent, col. 4:51-55).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 11. (Compl. ¶25).
• Illustrative independent claim 11 (a method claim) requires the steps of:
  • Electrically powering an illumination element.
  • Controlling current flow to produce a "predetermined special illumination visual lighting effect," where the controller starts in an "initial steady on illuminated state" before proceeding to the special effect.
  • Periodically interrupting the current flow at a frequency sufficient to force the element to remain in the "steady-on state" without proceeding to the special effects.
• The complaint reserves the right to assert dependent claims 2-7 and 10. (Compl. ¶51).

U.S. Patent No. 10,080,265 - "Decorative Light String Switchable Between Different Illumination States"

• Patent Identification: U.S. Patent No. 10080265, "Decorative Light String Switchable Between Different Illumination States," issued September 18, 2018. (Compl. ¶26).

The Invention Explained

• Problem Addressed: The ’265 Patent addresses the same technical challenge as its parent ’437 Patent: creating dual-mode lighting without costly or complex wiring. (’265 Patent, col. 1:37-53).
• The Patented Solution: This patent claims a system for implementing the method. It comprises: an illumination element; a "first switching circuit" (the in-bulb controller that produces the special effect); and a "second switching circuit" (a main controller) that periodically interrupts current to the first circuit. This interruption forces the first circuit to repeatedly reset, creating a perceived steady-on light, while a continuous current allows the special effect to run. (’265 Patent, Abstract; col. 4:22-51).
• Technical Importance: The claimed system provides a concrete hardware architecture for achieving dual-mode lighting effects on simple, inexpensive light strings. (Compl. ¶30; ’265 Patent, col. 6:11-19).

Key Claims at a Glance

• The complaint asserts independent claim 1. (Compl. ¶27).
• Independent claim 1 (a system claim) requires:
  • An electrically powered illumination element.
  • A "first switching circuit" with a controller to produce a special lighting effect, which initiates from an "initial on illuminated state."
  • A "second switching circuit" configured to "periodically interrupt the flow of current" to the first circuit at a sufficient frequency to cause it to reset to its "on state," making a viewer perceive it as "always on."
• The complaint reserves the right to assert dependent claims 2-7 and 10. (Compl. ¶62).

III. The Accused Instrumentality

Product Identification

• The accused products are decorative lighting products sold under the name "7.5 Ft Pre-Lit Kenwood Fraser Fir Flocked 1000 Micro Lights," referred to as the "Pre-Lit Trees." (Compl. ¶36).

Functionality and Market Context

• The complaint alleges the Pre-Lit Trees contain LEDs, some of which are "special illumination LEDs" with a default "predetermined on/off twinkling effect." (Compl. ¶37).
• The products include a "mode selector" that allows a user to switch between "Steady" and "Twinkle" modes. (Compl. ¶37).
• According to the complaint, selecting "Steady On" mode causes an IC on a circuit board (the "second circuit") to interrupt the current to the IC within the special illumination LEDs (the "first switching circuit"). This interruption is described as a "series (a plurality) of pulses" sufficient to reset the LED's IC and keep it in a steady state. (Compl. ¶38).
• Selecting "Twinkle" mode allegedly allows uninterrupted DC to flow, permitting the LED's internal IC to operate normally and produce the twinkling effect. (Compl. ¶39).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’437 Patent Infringement Allegations

Claim Element (from Independent Claim 11)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a. electrically powering illumination element;	The accused Pre-Lit Trees provide power to "1000 Micro Lts."	¶36, ¶37	col. 9:14
b. ...controlling the flow of current to the element to produce a predetermined special illumination visual lighting effect... controlling said element so that when it is powered up starting with an initial steady on illuminated state...	The special illumination LEDs are alleged to have a default "predetermined on/off twinkling effect." In "Twinkle" mode, an IC allows uninterrupted current to the LED's internal controller, causing it to produce a "bright/dim repetitive function."	¶37, ¶39	col. 9:15-22
c. periodically interrupt the flow of current to said illumination element, at an interruption frequency sufficient to cause the steady-on state without proceeding to said special lighting effects...	When "Steady On" mode is selected, an IC on the main circuit board allegedly "interrupts current" to the LED's internal controller by producing a "series (a plurality) of pulses" that keep the LEDs in a steady state and prevent the twinkling effect.	¶38	col. 9:23-26

• Identified Points of Contention:
  • Scope Questions: A question for the court may be whether the accused product's "bright to dim cycle" (Compl. ¶38) satisfies the claim requirement of "starting with an initial steady on illuminated state" before "proceed[ing] to said special lighting effects." The defense may argue the twinkle is a single, continuous effect, not a two-stage process.
  • Technical Questions: What is the specific frequency and nature of the "series of pulses" (Compl. ¶38) in the accused "Steady On" mode? The complaint alleges the frequency is sufficient to cause the desired effect, but infringement will depend on whether the factual evidence of the product's operation aligns with the functional requirements of the claims.

V. Key Claim Terms for Construction

• The Term: "periodically interrupt the flow of current"

• Context and Importance: This term describes the core mechanism for creating the steady-on mode from a special-effects bulb. The definition is critical, as infringement depends on whether the accused product's "series of pulses" (Compl. ¶38) constitutes an "interruption" in the claimed sense. Practitioners may focus on this term because its construction will determine whether a modulated signal infringes or if a complete power cut-off is required.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification uses phrases like "sending a reset signal/pulse" and discusses "pulsing voltage or current," which could support an interpretation that includes various forms of periodic signaling beyond a simple on/off switch. (’437 Patent, col. 5:10-14).
  • Evidence for a Narrower Interpretation: The specification also states that the circuit will "reinitialize in a start state every time it receives power from a zero power state," which could be argued to require a complete, albeit brief, cessation of power. (’437 Patent, col. 5:26-29).

• The Term: "initial steady on illuminated state"

• Context and Importance: This term defines the required starting condition of the special-effects controller before it begins its main routine. The infringement theory relies on the accused "twinkling" LED starting in a "bright" state that meets this definition. Whether a momentary peak brightness in a twinkle cycle qualifies as this "initial state" will be a key issue.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent itself qualifies the term, stating the initial state "may be for an extremely short period of time that appears to be part of the predetermined special visual lighting effect," suggesting it does not need to be a long or visually distinct phase. (’437 Patent, col. 4:28-32).
  • Evidence for a Narrower Interpretation: The claim language structures the operation sequentially: "starting with an initial steady on... and then proceed[ing] to said special lighting effects." This phrasing could support an argument that the initial state must be a distinct, temporally separate event from the special effect itself.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement by selling the Pre-Lit Trees to retailers and end-users, where the product's "mode selector" is designed to be used in an infringing manner. (Compl. ¶¶ 49, 60). Contributory infringement is alleged on the basis that the Pre-Lit Trees are not staple articles of commerce suitable for substantial non-infringing use. (Compl. ¶¶ 50, 61).
• Willful Infringement: Willfulness is alleged based on both pre- and post-suit knowledge. The complaint alleges pre-suit knowledge stemming from a prior business relationship where Plaintiff provided Defendants with product specifications and samples containing the patented technology, along with "verbal notice from Seasonal's agent" that the lights were patented. (Compl. ¶¶ 32, 41).

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

• A central issue will be one of prior conduct and knowledge: The allegations of a prior business relationship, disclosure of the patented technology, and subsequent copying (Compl. ¶¶ 31-35) will be a primary focus, especially for the claim of willful infringement. The evidence supporting these allegations of "copying of the Steady-On Invention" will be critical.
• A key technical question will be one of operational equivalence: Does the accused product's circuitry actually achieve its "Steady On" mode by rapidly resetting a special-effects controller, as claimed in the patents? Or does it use a different, non-infringing design, such as a separate, dedicated circuit for steady illumination? The outcome will depend on forensic analysis of the accused product's hardware and firmware.
• A core legal issue will be one of claim scope: Can the phrase "initial steady on illuminated state" be construed to read on the peak brightness phase of the accused product's "bright to dim" twinkle cycle? The court's interpretation of this and other key terms will likely determine the outcome of the infringement analysis.