DCT

1:23-cv-14008

Seasonal Specialties LLC v. Holiday Designs LLC

Log In
Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-14008, N.D. Ill., 02/06/2024
  • Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because Defendant Holiday Designs, LLC resides in the district, and Defendant Holiday Designs (Cambodia) Co. Ltd. is a foreign entity that may be sued in any judicial district.
  • Core Dispute: Plaintiff alleges that Defendants’ pre-lit artificial holiday trees infringe patents related to a method and system for switching decorative lights between a steady-on mode and a special effect mode (e.g., twinkling) using standard two-wire conductors.
  • Technical Context: The dispute centers on control circuitry for decorative LED light strings, a key feature in the competitive holiday and seasonal products market.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendants' counsel with detailed claim charts on August 18, 2022, asserting infringement of the patents-in-suit. This pre-suit notice is cited as a basis for willfulness allegations. The complaint also details a business history where Plaintiff allegedly provided Defendants with specifications and product samples incorporating the patented technology for a potential supply relationship that did not materialize.

Case Timeline

Date Event
2014-10-09 Earliest 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 Plaintiff allegedly introduced to Defendants' factories
2020-01 (approx.) Home Depot indicates it is no longer interested in purchasing Plaintiff's pre-lit tree
2022-06-29 Plaintiff alleges it notified Defendants' business partner of infringement
2022-07-20 Defendants' attorney allegedly acknowledged notice of the patents-in-suit
2022-08-18 Plaintiff allegedly provided Defendants' attorney with detailed claim charts
2024-02-06 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," Issued Jan. 24, 2017

The Invention Explained

  • Problem Addressed: The patent describes a challenge in the decorative lighting industry: providing consumers with a light string that can operate in both a steady-on mode and a special effect mode (like twinkling or color-changing) without requiring complex and expensive solutions like additional control wires or individually addressable bulbs (’437 Patent, col. 1:45-54).
  • The Patented Solution: The invention proposes a control system where a first circuit within a bulb is pre-programmed to produce a special lighting effect. This effect sequence begins with a brief, initial steady-on state. A separate, second circuit can then be activated to periodically interrupt the power flowing to the first circuit at a high frequency. This rapid-fire power interruption constantly resets the first circuit back to its initial steady-on state, preventing it from ever proceeding to the special effect part of its cycle. To a human observer, this series of rapid pulses appears as a continuous, steady light, thereby achieving two distinct modes over a standard two-wire connection (’437 Patent, col. 4:21-55).
  • Technical Importance: This approach allows for dual-functionality in decorative lighting products using low-cost components and standard manufacturing techniques, a significant commercial advantage in a price-sensitive market (Compl. ¶¶18, 21).

Key Claims at a Glance

  • The complaint asserts independent claims 1 (system) and 11 (method) (Compl. ¶50).
  • Independent Claim 1 (System):
    • An electrically powered illumination element.
    • A first switching circuit to control current flow to the element to produce a predetermined special lighting effect, which initiates from a steady-on state before proceeding to the special effects.
    • A second switching circuit configured to periodically interrupt the current to the first circuit at a frequency sufficient to reset the first circuit to its steady-on state, producing a plurality of steady-on pulses.
  • Independent Claim 11 (Method):
    • Electrically powering an illumination element.
    • Controlling current flow to produce a predetermined special illumination effect that starts with an initial steady-on state.
    • Periodically interrupting the current flow at a frequency sufficient to cause the steady-on state without proceeding to the special effects, thereby producing a plurality of steady-on illumination pulses.
  • The complaint also asserts dependent claims 2-7 and 10 (Compl. ¶50).

U.S. Patent No. 10,080,265 - "Decorative Light String Switchable Between Different Illumination States," Issued Sep. 18, 2018

The Invention Explained

  • Problem Addressed: The ’265 Patent shares its specification with the ’437 Patent and addresses the same technical problem of creating dual-mode decorative lights without complex wiring (’265 Patent, col. 1:16-60).
  • The Patented Solution: The solution is identical to that described in the ’437 Patent, utilizing a second circuit to rapidly interrupt and reset a first special-effect circuit to hold it in an apparent steady-on state (’265 Patent, col. 4:21-51).
  • Technical Importance: The patent provides continued protection for the commercially valuable approach of achieving dual-mode lighting effects with low-cost, standard wiring (Compl. ¶29).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶71).
  • Independent Claim 1 (System):
    • An electrically powered illumination element.
    • A first switching circuit containing a controller to produce a predetermined special lighting effect, which initiates from an "initial on illuminated state" before proceeding to other special effects.
    • A second switching circuit configured to periodically interrupt current to the first circuit at a frequency sufficient to cause the first circuit to reset to its "on state" without proceeding to other effects, so that a viewer perceives the element as "always on."
  • The complaint also asserts dependent claims 2-7 and 10 (Compl. ¶71).

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 collectively as the "Pre-Lit Trees" (Compl. ¶35).

Functionality and Market Context

  • The complaint alleges that the Pre-Lit Trees contain special illumination LEDs with a predetermined twinkling effect (Compl. ¶36). The products include a mode selector that allows a user to switch the lights between a "Steady" mode and a "Twinkle" mode (Compl. ¶36). The complaint alleges these products were offered for sale to major retailers like Home Depot, positioning them in the mainstream consumer holiday decorations market (Compl. ¶34).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exhibits C and D) that were not provided with the filed pleading; therefore, a table-based summary cannot be constructed (Compl. ¶¶65, 79). No probative visual evidence provided in complaint. The narrative infringement theory presented in the complaint is summarized below.

’437 and ’265 Patents Infringement Allegations

The complaint alleges that the Pre-Lit Trees embody the patented invention through a two-circuit architecture. The first circuit is described as an integrated circuit (IC) located within the special illumination LEDs themselves, which is pre-programmed to produce a "bright to dim" twinkling effect (Compl. ¶¶37-38). The second circuit is identified as an IC on a separate circuit board connected to the user-operated mode selector (Compl. ¶¶36-37).

According to the complaint, when a user selects the "Steady On" mode, the second circuit on the main board "interrupts current" to the first circuit (the IC in the LED). This interruption allegedly occurs as a series of pulses at a frequency sufficient to cause the LED's IC to continuously reset to its initial "Steady On" state without proceeding to the twinkling cycle (Compl. ¶37). This series of pulses allegedly creates the appearance of a steady light. Conversely, when the "Twinkling effect" mode is selected, the second circuit allegedly allows "uninterrupted (non-pulsing) DC to flow," permitting the IC in the LED to operate normally and execute its programmed twinkling effect (Compl. ¶38). This alleged operation is mapped to the system claims of both patents and the method claim of the ’437 Patent.

  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the accused product's architecture of a main board IC and a separate in-bulb IC constitutes the "first switching circuit" and "second switching circuit" as claimed. The defense could argue that this physical and functional arrangement differs from the one contemplated by the patent.
    • Technical Questions: The analysis may focus on the nature of the electrical signal in "Steady On" mode. The complaint alleges the signal "interrupts current" and "produces a series... of pulses" (Compl. ¶37). A key factual dispute may arise over whether this signal's frequency and effect on the in-bulb IC meet the claim limitation of being "sufficient to cause the first circuit to reset... without proceeding to said other special lighting effects" (’265 Patent, cl. 1).

V. Key Claim Terms for Construction

  • The Term: "an interruption frequency sufficient to cause the first circuit to reset to its on state without proceeding to said other special lighting effects" (from ’265 Patent, Claim 1; similar language in ’437 Patent, Claim 11).
  • Context and Importance: This functional language is the core of the invention. The entire infringement theory rests on the allegation that the accused product's "Steady On" mode operates by generating pulses at a frequency that is "sufficient" to achieve this specific reset function. The definition of "sufficient" will be dispositive.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims do not recite a specific numerical frequency, suggesting the patentee intended the term to be defined by its functional result rather than a particular rate.
    • Evidence for a Narrower Interpretation: The specification provides examples, stating a "preferred pulse rate is 60 hz or at least 60 hz, but not more than 1 kHz" and that the frequency should be "at least beyond the frequency of a human to observe flicker" (’265 Patent, col. 5:35-37, col. 4:62-64). A defendant may argue these passages limit the scope of "sufficient" to a particular range or require the complete absence of any perceptible flicker.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement based on Defendants' advertising and instructions that allegedly "instruct users... to switch between illumination modes of 'Steady On' or 'Twinkle'" (Compl. ¶¶43, 57). This act of switching modes, performed by the end-user, is alleged to directly infringe method claim 11 of the ’437 Patent. Contributory infringement is also alleged, stating the Pre-Lit Trees are a material component specially made for practicing the patented method and are not a staple article of commerce suitable for substantial non-infringing use (Compl. ¶¶59-60, 64).
  • Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit knowledge. The complaint asserts that Defendants had actual knowledge of the patents and the alleged infringement no later than August 18, 2022, when Plaintiff provided detailed claim charts to Defendants' attorney (Compl. ¶40). This pre-suit notice, combined with Defendants' alleged continuation of infringing activities, is the primary basis for the willfulness claim (Compl. ¶48).

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

  1. A core issue will be one of claim scope and function: How will the court construe the functional requirement that the "interruption frequency" be "sufficient" to hold the lighting circuit in its initial steady-on state? The case will likely depend on whether the specific electrical signals and resulting circuit behavior in the accused "Steady" mode fall within the scope of this critical claim limitation.
  2. A key evidentiary question will be one of technical operation: What evidence will be presented to prove (or disprove) that the accused products' two-part IC system (main board and in-bulb) operates as the claimed "first" and "second" circuits and that the interaction between them is a power interruption that causes a "reset" as claimed, rather than some other mode of operation that merely appears steady?