DCT
1:23-cv-17146
Pure Edge Lighting LLC v. Davide Groppi SRL
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Pure Edge Lighting LLC (Illinois)
- Defendant: Davide Groppi S.R.L. (Italy)
- Plaintiff’s Counsel: Bishop Diehl & Lee, Ltd.
- Case Identification: 1:23-cv-17146, N.D. Ill., 12/28/2023
- Venue Allegations: Venue is asserted on the basis that the defendant is a foreign corporation not resident in the United States and may therefore be sued in any judicial district.
- Core Dispute: Plaintiff, as exclusive licensee, alleges that Defendant’s "Infinito" line of tension-mounted lighting systems infringes a U.S. patent covering flexible, rollable linear lighting technology.
- Technical Context: The technology concerns architectural linear lighting systems that can be shipped in a compact, rolled form and then installed under tension over long, custom spans.
- Key Procedural History: Plaintiff alleges it is the exclusive licensee of the patent-in-suit with all substantial rights to enforce it. The complaint states that Plaintiff provided Defendant with actual notice of the patent via a cease-and-desist letter on July 21, 2023, which may form the basis for its willfulness claim. The patent-in-suit was subject to a Certificate of Correction to amend language in one of the asserted claims.
Case Timeline
| Date | Event |
|---|---|
| 2012-01-11 | '541 Patent Priority Date (Filing Date) |
| 2015-05-19 | U.S. Patent No. 9,033,541 Issued |
| 2015-09-22 | Certificate of Correction for '541 Patent Issued |
| 2023-07-21 | Plaintiff sends cease-and-desist letter to Defendant |
| 2023-09-22 | Date of last access to Defendant's product webpage cited in complaint |
| 2023-12-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,033,541 - "TENSION MOUNTED LIGHTING SYSTEM"
- Patent Identification: U.S. Patent No. 9,033,541, "TENSION MOUNTED LIGHTING SYSTEM", issued May 19, 2015.
The Invention Explained
- Problem Addressed: The patent's background section identifies issues with conventional linear light fixtures, noting they typically have a fixed length, which complicates installation, and their rigidity makes shipping difficult and costly for lengths over 96 inches ('541 Patent, col. 1:36-49).
- The Patented Solution: The invention is a lighting system based on a flexible metal strip that can be rolled, such as helically into a small container for shipping, and then unrolled and held in tension between two clamps at an installation site ('541 Patent, Abstract; col. 4:1-5). A strip of lights, such as LEDs, is secured to the metal strip, creating a customizable linear light source ('541 Patent, col. 4:5-10).
- Technical Importance: This design allows for the creation of long, continuous linear lighting installations from a compact, easily transportable package, overcoming the shipping and handling limitations of traditional rigid fixtures ('541 Patent, col. 6:20-32).
Key Claims at a Glance
- The complaint asserts independent claims 1, 10 (method), 12, 18 (method), and 19 (Compl. ¶¶ 14, 16, 17, 19, 20). The independent apparatus claims are:
- Independent Claim 1:
- a metal strip extending longitudinally between ends, said metal strip being flexible whereby said strip is adapted to be rolled into a roll
- a first clamp securing one end of the metal strip
- a second clamp securing the other end of the metal strip
- a light strip on one side of said longitudinal metal strip
- Independent Claim 12:
- a metal strip extending longitudinally and defining a concave channel, with the strip being flexible and adapted to be rolled
- a first clamp and a second clamp
- light emitting diodes (LEDs) on said metal strip in said channel
- Independent Claim 19:
- a flexible metal strip defining a generally concave channel
- a first clamp including a base mountable to a building structure and a clamp arm with clamping members
- a second clamp with similar base and clamp arm components
- a light strip in the channel
- a box at one clamp for connecting a power source
- The complaint notes it may assert dependent claims 2-9, 11, 13-17, and 20 (Compl. ¶¶ 15, 18, 21).
III. The Accused Instrumentality
Product Identification
- The accused products are the Davide Groppi "INFINITO 6, INFINITO 12 AND INFINITO 18" tension-mounted lighting systems (Compl. ¶¶ 10, 30).
Functionality and Market Context
- The complaint alleges the Infinito products are "tension-mounted lighting system[s]" that Defendant has made, used, imported, installed, sold, and offered for sale in the United States (Compl. ¶¶ 10, 23). The complaint alleges these systems have been installed in U.S. locations, including in Chicago, Illinois, and Tempe, Arizona (Compl. ¶22). Plaintiff alleges that installation of the Infinito system by installers involves practicing the steps of the asserted method claims ('541 Patent, ¶26).
IV. Analysis of Infringement Allegations
The complaint does not provide an element-by-element infringement analysis. The allegations are based on general statements that the accused products embody the claimed invention.
’541 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a metal strip extending longitudinally between ends, said metal strip being flexible whereby said strip is adapted to be rolled into a roll... | The accused "Infinito" products are described as "tension-mounted lighting system[s]" which allegedly incorporate a flexible metal strip. | ¶10, ¶25 | col. 4:1-5 |
| a first clamp securing one end of the metal strip to a first selected location; | The accused systems are allegedly installed by securing the strip's ends between two points using mounting hardware, which Plaintiff contends are "clamps." | ¶25, ¶26 | col. 4:18-19 |
| a second clamp securing the other end of the metal strip to a second selected location... | The accused systems are allegedly installed by securing the strip's ends between two points using mounting hardware, which Plaintiff contends are "clamps." | ¶25, ¶26 | col. 4:18-19 |
| a light strip on one side of said longitudinal metal strip. | The accused systems are lighting products that allegedly feature a light strip attached to the metal strip. | ¶25 | col. 4:5-10 |
’541 Patent Infringement Allegations
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a metal strip extending longitudinally between ends and defining a concave channel along its length... | The complaint's general infringement allegation suggests the "Infinito" product's metal strip has a concave channel. | ¶25 | col. 5:27-29 |
| light emitting diodes (LEDs) on said metal strip in said channel. | The accused lighting systems allegedly utilize LEDs as the light source, positioned within the strip's channel. | ¶25 | col. 4:6-8 |
’541 Patent Infringement Allegations
| Claim Element (from Independent Claim 19) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first clamp secured the first end of the metal strip and including a first base mountable to a first selected location of the building structure; and a first clamp arm... | The complaint does not specify the structure of the accused product's mounting hardware but generally alleges it meets all claim limitations. | ¶25 | col. 8:31-43 |
| a box at one of said first and second clamps for connecting a power source to said light strip; | The complaint's general allegation suggests the accused system includes a power connection box at one of the clamps. | ¶25 | col. 8:52-54 |
Identified Points of Contention
- Technical Questions: The complaint lacks specific factual allegations mapping features of the Infinito product to the claim elements. A central question will be whether discovery reveals that the accused product actually has a metal strip that is "adapted to be rolled" as specified in the patent ('541 Patent, col. 5:21-26), a "concave channel" as required by claims 12 and 19, and the detailed clamp structure (base, arm, mount) and power "box" recited in claim 19. Exhibit C to the complaint provides a printout from the defendant's website showing the "Infinito" product as a thin, linear light strip stretched between two small, wall-mounted fixtures (Compl. ¶10, Ex. C). The visual evidence supports the general configuration, but the specific technical details required by the claims are not apparent from this visual alone.
- Scope Questions: A likely point of dispute will be the scope of the term "clamp." The patent discloses a specific ball-and-socket clamp assembly ('541 Patent, col. 4:36-39), and the court will need to determine whether the claim term is limited to that structure or can be read more broadly to cover the Defendant's mounting hardware.
V. Key Claim Terms for Construction
The Term: "flexible whereby said strip is adapted to be rolled into a roll" (Claim 1)
- Context and Importance: This limitation is the core technical concept that distinguishes the invention from prior art rigid fixtures. The construction of this term will be critical, as infringement will depend on whether the accused Infinito product's strip possesses this specific characteristic, rather than merely being bendable or curved.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language "adapted to be rolled" is facially broad and does not specify a particular method or diameter of rolling.
- Evidence for a Narrower Interpretation: The specification describes that the flexibility "allows it to be helically rolled (see FIG. 9)" and gives a preferred embodiment that "may be rolled into at least a three inch diameter without damage so that it will spring back to a straight configuration when unrolled" ('541 Patent, col. 4:2-3; col. 5:21-26). A party could argue these details should inform the scope of the claim term.
The Term: "clamp" (Claim 1)
- Context and Importance: Practitioners may focus on this term because the patent discloses a specific, multi-part clamp assembly, while the claim term itself is generic. The infringement analysis for all apparatus claims will depend on whether the Defendant's mounting hardware falls within the construed scope of "clamp."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term "clamp" is not explicitly defined in the specification, which may support giving it its plain and ordinary meaning.
- Evidence for a Narrower Interpretation: The patent's detailed description and figures exclusively show a clamp assembly comprising a base, a clamp arm, and a "ball and socket connection" ('541 Patent, Fig. 2; col. 4:27-39). A defendant may argue that these are the only structures disclosed that perform the clamping function and should therefore limit the claim's scope.
VI. Other Allegations
Indirect Infringement
- The complaint alleges inducement of infringement, stating that Defendant instructs third-party representatives and customers to install the Infinito system, thereby causing them to practice the patented methods (Compl. ¶41). It further alleges contributory infringement, asserting the Infinito products are "especially made or especially adapted for use in infringement" and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶¶ 54-55).
Willful Infringement
- The complaint alleges willfulness based on Defendant's actual knowledge of the '541 Patent, purportedly established by a cease-and-desist letter sent on July 21, 2023 (Compl. ¶¶ 27, 31, 35). It also makes a more general allegation of pre-suit knowledge "on information and belief" (Compl. ¶32).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key question will be one of definitional scope: can the claim limitation "flexible whereby said strip is adapted to be rolled into a roll," which is central to the patent's solution for shipping and handling, be construed to read on the specific material properties and configuration of the accused Infinito strip? The outcome will depend on evidence regarding how the accused product is manufactured, packaged, and installed.
- The case will also present a core evidentiary challenge: given the complaint's lack of specific technical detail, discovery will be required to determine if the accused Infinito system contains the specific structural elements of the more detailed claims, such as the "concave channel" of Claim 12 and the multi-part "clamp" and power "box" recited in Claim 19.