DCT
1:24-cv-11436
Pinchot v. Cooledge Lighting Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mark A. Pinchot (Ohio)
- Defendant: Cooledge Lighting, Inc. (Canada; U.S. HQ in Massachusetts)
- Plaintiff’s Counsel: Nutter, McClennen & Fish LLP; Renner Otto
- Case Identification: Mark A. Pinchot v. Cooledge Lighting, Inc., 1:24-cv-11436, D. Mass., 05/31/2024
- Venue Allegations: Venue is alleged to be proper in the District of Massachusetts because Defendant maintains a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s architectural acoustic lighting products infringe two patents related to combining perforated LED light sheets with sound-absorbing tiles.
- Technical Context: The technology integrates large-format LED lighting panels with acoustical materials, a combination sought for modern architectural design in commercial and public spaces.
- Key Procedural History: The complaint states that the patents-in-suit are co-owned by Plaintiff Mark A. Pinchot and a non-party, Heilux, LLC. Plaintiff asserts the right to sue individually based on an "Enforcement Agreement" between the co-owners. The terms of this agreement and whether Heilux is a necessary party to the litigation may become a procedural focus.
Case Timeline
| Date | Event |
|---|---|
| 2016-11-14 | Earliest Priority Date for both patents |
| 2019-02-26 | U.S. Patent No. 10,215,387 Issued |
| 2020-09-22 | U.S. Patent No. 10,779,478 Issued |
| 2024-05-31 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,215,387 - "ACOUSTIC-CONTROL LIGHT FIXTURE AND METHOD FOR MAKING AND USING" (Issued Feb. 26, 2019)
The Invention Explained
- Problem Addressed: The patent describes the challenge of managing heat generated by large arrays of LEDs and efficiently providing power, particularly for architectural lighting applications that also require acoustic control. (’387 Patent, col. 1:51-61).
- The Patented Solution: The invention is an apparatus combining a light-emitting sheet with an acoustic tile. The lighting sheet is perforated with a plurality of holes that are positioned between the electrical conductors of the LED grid. (’387 Patent, Abstract). This configuration allows sound to pass through the lighting element to be absorbed by the underlying acoustic tile, creating a single integrated lighting and sound-dampening fixture. (’387 Patent, col. 2:45-50).
- Technical Importance: The invention provides a method for integrating large-area illumination and acoustic management into a single, efficient architectural product without requiring bulky heat sinks or complex mounting systems. (’387 Patent, col. 6:31-36).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶16).
- The essential elements of Claim 1 are:
- An apparatus comprising a light system with a "first lighting sheet."
- The sheet includes a plurality of LEDs arranged on a grid of electrical conductors on an insulating substrate.
- The sheet includes a plurality of holes through the substrate.
- Each hole is positioned between an adjacent pair of rows and an adjacent pair of columns of the electrical conductors.
- An acoustic tile, to which the first lighting sheet is mounted.
- The complaint reserves the right to assert additional claims. (Compl. ¶15).
U.S. Patent No. 10,779,478 - "METHOD AND APPARATUS FOR AN ACOUSTIC-CONTROL LIGHT FIXTURE" (Issued Sep. 22, 2020)
The Invention Explained
- Problem Addressed: As with the parent '387 patent, this invention addresses the need for lighting solutions that also provide acoustic control. (’478 Patent, col.2:55-60).
- The Patented Solution: This invention builds on the prior art by adding an "acoustically transparent diffuser" to the assembly. The claimed method involves mounting the light system to an acoustic tile and then "coupling a light diffuser across the light system." (’478 Patent, col. 8:34-40). The diffuser contains "a plurality of micro-louvers having openings" that create open-air channels, allowing sound to pass through to the acoustic tile while the diffuser softens and spreads the light. (’478 Patent, col. 16:22-27).
- Technical Importance: This solution enhances the aesthetic quality of the integrated light fixture by diffusing the LED light, while preserving the acoustic functionality through the use of specialized, sound-permeable micro-louvers.
Key Claims at a Glance
- The complaint asserts independent method claim 1. (Compl. ¶30).
- The essential elements of Claim 1 are:
- A method comprising providing a light system with a lighting sheet.
- Mounting the light system to a first face of an acoustic tile.
- Coupling a light diffuser across the light system, positioned between the diffuser and the acoustic tile.
- The light diffuser includes a plurality of "micro-louvers" with openings forming "open-air channels" that extend from the exterior of the diffuser to the acoustic tile.
- The complaint reserves the right to assert additional claims. (Compl. ¶29).
III. The Accused Instrumentality
Product Identification
- Defendant’s "TILE Acoustic" lighting products, including the acoustic versions of the "TILE interior" and "TILE Tunable White" products (the "TILE Product"). (Compl. ¶12).
Functionality and Market Context
- The complaint alleges the TILE Product is a lighting system intended for mounting to a "sound absorbing substrate to form a light emitting panel with strong acoustic properties." (Compl. ¶21). The complaint asserts, based on product documentation, that the lighting sheet component contains holes or "slots" that are provided "to allow sound transmission to acoustic materials." (Compl. ¶20, Ex. C). The complaint further alleges that diffusers are coupled across the light system. (Compl. ¶35).
IV. Analysis of Infringement Allegations
’387 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An apparatus comprising: a light system that includes one or more lighting sheets including a first lighting sheet... | The TILE Product is alleged to include a lighting sheet. | ¶17 | col. 16:7-9 |
| wherein the first lighting sheet includes a first plurality of LEDs arranged on a grid of intersecting rows and columns of electrical conductors on an insulating substrate... | The TILE Product allegedly includes a lighting sheet with LEDs on a grid of intersecting electrical conductors (rows marked A, columns marked B in the complaint's visual). A diagram of the accused lighting sheet is provided. (Compl. p. 5). | ¶18 | col. 16:10-13 |
| wherein the first lighting sheet includes a plurality of holes through the insulating substrate of the first lighting sheet... | The TILE Product allegedly includes a lighting sheet with holes, which are highlighted in a diagram. Exhibit C is cited to show the holes are described as slots for sound transmission. (Compl. p. 5). | ¶20 | col. 16:15-17 |
| wherein each one of the plurality of holes through the insulating substrate of the first lighting sheet is positioned between an adjacent pair of rows of electrical conductors and between an adjacent pair of columns of electrical conductors of the first lighting sheet | The complaint’s diagram purports to show that the holes are positioned between the rows (A) and columns (B) of electrical conductors. | ¶20 | col. 16:17-21 |
| and an acoustic tile, wherein the first lighting sheet is mounted to the acoustic tile. | Defendant’s website is quoted as stating the TILE Product is "intended to be mounted to a sound absorbing substrate to form a light emitting panel with strong acoustic properties." | ¶21 | col. 16:21-22 |
- Identified Points of Contention:
- Scope Questions: A primary question may be whether the accused TILE Product, as sold by Defendant, constitutes the complete "apparatus" of claim 1. The complaint alleges the product is "mounted to an acoustic tile" by citing marketing language that it is "intended to be mounted" to a substrate. (Compl. ¶21). This raises the question of whether Defendant sells an unassembled kit or a completed apparatus, which is critical for a finding of direct infringement.
’478 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method comprising: providing a light system that includes one or more lighting sheets including a first lighting sheet... wherein the first lighting sheet includes a first plurality of LEDs arranged on a grid... | The TILE Product is alleged to include a lighting sheet with a plurality of LEDs arranged on a grid of electrical conductors. The complaint provides a schematic of the accused lighting sheet to support this allegation. (Compl. p. 8). | ¶¶31-32 | col. 16:10-14 |
| mounting the light system to a first face of an acoustic tile; and | Defendant's website is cited to allege that the TILE Product is mounted to an acoustic tile to form a light emitting panel. The complaint later alleges direct infringement by "supplying and installing" the products with tiles. | ¶¶34, 38 | col. 16:15-16 |
| coupling a light diffuser across the light system such that the one or more lighting sheets are located between the light diffuser and the first face of the acoustic tile... | The complaint alleges that, based on Defendant's website, "diffusers are coupled across the light system." A marketing image from the website is included, showing an installed product with a diffuser. (Compl. p. 9). | ¶35 | col. 16:17-22 |
| wherein the light diffuser includes a plurality of micro-louvers having openings that form portions of a plurality of open-air channels that extend from an exterior of the light diffuser to the acoustic tile. | It is alleged that the diffuser includes micro-louvers with openings to enable sound transmission, and that these "open air channels of the light diffuser combine with the holes of the lighting sheet to form channels that extend from an exterior of the light diffuser through the lighting sheet to the acoustic tile." | ¶¶36-37 | col. 16:22-27 |
- Identified Points of Contention:
- Technical Questions: The complaint alleges the accused diffuser contains "micro-louvers" but provides only a high-level marketing photograph as evidence. (Compl. p. 9). A key technical question will be what specific structure the accused diffuser has and whether that structure meets the "micro-louvers" limitation as defined by the patent.
- Scope Questions: For the method claim, a point of contention may be who performs the claimed steps of "mounting" and "coupling." The complaint alleges Defendant directly infringes by "supplying and installing" the products (Compl. ¶38), but the strength of this allegation will depend on evidence that Defendant itself, rather than its customers, performs the complete, claimed method.
V. Key Claim Terms for Construction
The Term: "mounted to" ('387 Patent, Claim 1)
- Context and Importance: This term is central to the direct infringement analysis for the '387 patent's apparatus claim. Whether the lighting sheet is "mounted to" the acoustic tile at the time of sale will be a critical factual and legal question. Practitioners may focus on this term to distinguish between the sale of a completed, infringing apparatus versus a kit of parts.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not mandate a specific method of mounting. Language such as "adhered or otherwise held" could suggest a flexible meaning that encompasses components provided as an integrated system, even if final assembly is required. (’387 Patent, col. 6:5-7).
- Evidence for a Narrower Interpretation: The claim is to an "apparatus," which typically implies an assembled device. The specification describes the light sheet as being "adhered" to the tile, suggesting a state of physical connection, not just an intention to connect. (’387 Patent, col. 6:5-7).
The Term: "micro-louvers" ('478 Patent, Claim 1)
- Context and Importance: The infringement allegation for the '478 patent hinges on the accused diffuser having this specific structure. The definition of this term will determine whether the accused product's diffuser, which is not shown in technical detail in the complaint, falls within the claim scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the function of the structure as part of an "acoustically transparent diffuser 272 (e.g., such as diffusive micro-louvers)." (’478 Patent, col. 8:34-36). A party might argue that this "e.g." phrasing means "micro-louvers" is just one example of a broader category of acoustically transparent diffusing structures.
- Evidence for a Narrower Interpretation: The term "louver" itself has a specific structural connotation of angled slats or fins. The patent explicitly uses the term "micro-louvers" in the claim, which could be construed as a deliberate limitation to a specific type of structure, as opposed to a simple perforated sheet or fabric diffuser.
VI. Other Allegations
- Indirect Infringement: For both the ’387 and ’478 patents, the complaint alleges induced and contributory infringement. The allegations are based on Defendant allegedly selling the TILE Products with knowledge of the patents and with the intent that customers will combine them with acoustic tiles (and diffusers for the '478 patent) in an infringing manner. The complaint further alleges the products are "especially made or especially adapted" for this infringing use and are not staple articles of commerce. (Compl. ¶¶23-24, 39-40).
- Willful Infringement: The complaint alleges that Defendant's infringement has been willful based on alleged "knowledge of the Asserted Patents." (Compl. ¶¶13, 25, 41). The complaint does not specify the basis or timing of this alleged knowledge (e.g., pre- or post-suit).
VII. Analyst’s Conclusion: Key Questions for the Case
Assembly and Direct Infringement: A central issue for the '387 patent will be whether Defendant sells a fully assembled apparatus with the lighting sheet "mounted to" an acoustic tile, or if it sells components intended for third-party assembly. The resolution of this question will determine the viability of the direct infringement claim and may shift the case’s focus to the evidence supporting indirect infringement.
Structural Equivalence: For the '478 patent, a key evidentiary question will be one of technical structure: what is the precise construction of the accused diffuser, and does that structure contain "micro-louvers" as that term is construed from the patent? The lack of technical detail for the accused diffuser in the complaint makes this a primary open question.
Standing and Party Joinder: An initial procedural question may concern Plaintiff's standing to sue alone. Given the stated co-ownership of the patents with Heilux, LLC, the court may need to examine the "Enforcement Agreement" to determine if Plaintiff possesses all substantial rights to enforce the patents or if Heilux is a necessary party that must be joined to the action.