DCT

1:17-cv-01592

NanoLumens Acquisition Inc v. Gable Signs & Graphics Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:17-cv-01592, D. Md., 06/09/2017
  • Venue Allegations: Venue is asserted based on Defendant being a Maryland corporation with its principal place of business within the judicial district.
  • Core Dispute: Plaintiff alleges that Defendant’s flexible and curved LED display products infringe three patents related to modular, shape-reconfigurable, and lightweight digital display systems.
  • Technical Context: The technology concerns large-format, flexible LED displays, a growing market segment used for advertising and architectural integration where traditional rigid displays are impractical.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of U.S. Patent Nos. 8,963,895 and 9,159,707 via a letter dated May 8, 2017, which was received on May 10, 2017, approximately one month before the complaint was filed. This alleged pre-suit knowledge forms the basis for Plaintiff's willfulness claims regarding those two patents.

Case Timeline

Date Event
2008-01-04 Earliest Priority Date for ’707 and ’516 Patents
2011-09-22 Priority Date for ’895 Patent
2015-02-24 ’895 Patent Issued
2015-10-13 ’707 Patent Issued
2017-05-02 ’516 Patent Issued
2017-05-10 Defendant allegedly received notice of ’895 & ’707 Patents
2017-06-09 Complaint Filed

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

U.S. Patent No. 8,963,895 - “Ubiquitously Mountable Image Display System,” issued February 24, 2015 (’895 Patent)

The Invention Explained

  • Problem Addressed: The patent describes the difficulty of mounting traditional large-screen displays, which are often heavy and rigid, onto non-flat surfaces like curved walls or pillars. This requires costly and complex custom mounting fixtures. (Compl. ¶¶ 6-7; ’895 Patent, col. 1:7-24).
  • The Patented Solution: The invention is a lightweight, "shape-reconfigurable" display system. It consists of a flexible screen material containing a matrix of perforations. Behind this screen, individual light source circuit modules are attached, with each light source aligning with a perforation to project a pixel of light onto the viewing surface. This design allows the entire display to be bent to conform to a mounting surface without creating visible distortions in the image. (Compl. ¶16; ’895 Patent, Abstract; col. 4:35-50).
  • Technical Importance: This technology allows for the installation of large, seamless digital displays in architecturally complex locations where conventional displays would be unsuitable. (Compl. ¶¶ 8-9).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims, including at least dependent claim 6 (Compl. ¶¶ 40, 45). The analysis here focuses on independent claim 1, from which claim 6 ultimately depends.
  • Essential elements of claim 1 include:
    • A display screen component made of a material that accommodates flexing without creating a "perceivable aberration" in the separation distance between picture elements.
    • The display screen has a plurality of perforations arranged in a matrix.
    • A plurality of circuit modules, each with a light source, are attached to the display screen.
    • Each light source is aligned to a corresponding perforation.
    • The "perceivable aberration" is defined as a perceivable difference between inter-column spacing in the matrix.
  • The complaint reserves the right to assert other claims.

U.S. Patent No. 9,159,707 - “Flexible Display,” issued October 13, 2015 (’707 Patent)

The Invention Explained

  • Problem Addressed: The patent identifies the challenge of producing large-scale flexible displays, noting that existing manufacturing techniques are not easily scalable and result in products that are heavy, expensive, and unreliable. (Compl. ¶6; ’707 Patent, col. 1:20-27).
  • The Patented Solution: The invention proposes a modular approach using multiple self-contained, pixel-containing rigid chips, termed "chixels," which are arranged on a flexible substrate. The space between these rigid chixels (the "chixel gap") allows the overall display to bend. The invention focuses on sizing and arranging the chixels so that the "pixel gap" between pixels on adjacent chixels is uniform with the pixel gap between pixels on the same chixel, creating a visually seamless image even when flexed. (Compl. ¶19; ’707 Patent, Abstract; col. 1:30-41).
  • Technical Importance: This modular design facilitates the construction of large, customizable, and flexible displays while aiming to maintain high image quality across the entire surface. (Compl. ¶7).

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims, including at least independent claim 1. (Compl. ¶¶ 52, 57).
  • Essential elements of claim 1 include:
    • A plurality of light-emitting rigid "chixels" affixed to a flexible substrate.
    • Each chixel comprises a plurality of light-emitting pixels on its own rigid substrate, with "substantially equal first pixel gaps" between them.
    • The chixels themselves are arranged on the flexible substrate to create "substantially equal second pixel gaps" between pixels on adjacent chixels.
    • A key limitation is that the "first pixel gaps" (intra-chixel) are "substantially equal" to the "second pixel gaps" (inter-chixel).
  • The complaint reserves the right to assert other claims.

Multi-Patent Capsule

  • Patent Identification: U.S. Patent No. 9,640,516, “Flexible Display Apparatus and Methods,” issued May 2, 2017 (’516 Patent).
  • Technology Synopsis: As a continuation of the application that led to the ’707 Patent, the ’516 Patent addresses the same technical field. It describes a flexible display constructed from a plurality of rigid, pixel-containing chixels arranged on a flexible substrate, with a focus on managing the gaps between chixels to enable flexibility while maintaining a uniform, seamless appearance. (Compl. ¶22; ’516 Patent, Abstract).
  • Asserted Claims: The complaint asserts infringement of one or more claims, including at least independent claim 1. (Compl. ¶69).
  • Accused Features: The complaint accuses the flexible LED display modules used in the Uniqlo and Aventura Displays of infringing the ’516 Patent. (Compl. ¶64).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are "flexible LED display modules" manufactured, used, and sold by Defendant Gable. (Compl. ¶40). The complaint identifies specific examples, including the "Uniqlo Disney Display" and curved displays installed at "Aventura Mall." (Compl. ¶¶ 27-28).

Functionality and Market Context

  • The complaint alleges the accused products are "high-resolution digital displays" used to create custom signage, including "curved displays" and displays "shaped specifically for their architectural environments." (Compl. ¶¶ 28, 31, 34). The complaint provides a photograph of a circular, curved LED sign installed for the brand Uniqlo, described as the "Uniqlo Disney Display." (Compl. p. 6). These products are allegedly used in high-profile commercial and retail settings and compete directly with Plaintiff's products. (Compl. ¶¶ 28, 44). The complaint notes Plaintiff's inability to acquire a physical sample for pre-suit analysis, basing its infringement belief on publicly available information and the visual appearance of the accused displays. (Compl. ¶31).

IV. Analysis of Infringement Allegations

The complaint alleges infringement based on "information and belief," arguing that for the accused displays to function as they appear in photographs, they must necessarily practice the claimed inventions. (Compl. ¶31). The following charts summarize the allegations, which are presently inferential and lack specific technical evidence.

’895 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a display screen component comprising a material that accommodates flexing of said display screen component... The accused products are described as "flexible LED displays" and are shown in a curved configuration, suggesting they are made of a material that accommodates flexing. (Compl. p. 6). ¶¶31, 32 col. 4:35-38
said display screen component has a plurality of perforations arranged in a matrix configuration... and each individual light source... is aligned to a corresponding perforation... The complaint does not provide sufficient detail for analysis of this element. It alleges the accused products are "LED displays" but provides no evidence or specific allegation that they operate using a perforated screen with rear-mounted light sources. ¶34 col. 10:41-47
without creating a perceivable aberration in separation distance between two or more picture elements of a displayed image... Plaintiff alleges its patented technology creates a "seamless display image" and believes the accused displays, based on their appearance, must do the same, thereby implying the absence of perceivable aberrations. (Compl. p. 6). ¶32 col. 10:38-41

’707 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a plurality of light emitting rigid chixels affixed to a flexible substrate... The accused products are described as "curved displays made of LED panels" and "flexible LED display modules," suggesting an assembly of rigid components ("chixels") on a flexible backplane ("substrate"). ¶¶28, 40 col. 12:13-14
each of said... rigid chixels comprising... a plurality of light emitting pixels affixed to a rigid substrate... The accused displays are described as "high-resolution LED video displays," which implies they are composed of pixelated, rigid components. ¶34 col. 12:15-17
said... pixels arranged... to provide a spaced array of pixels providing a plurality of substantially equal first pixel gaps... and... second pixel gaps... The complaint argues that to create a "seamless display image" as they appear to do, the accused products must necessarily arrange their display modules ("chixels") to ensure uniform pixel spacing across the entire display, including across the gaps between modules. ¶¶31, 32 col. 12:20-33
further characterized in that each of said plurality of first pixel gaps is substantially equal to each of said plurality of second pixel gaps across said flexible display. This is the core of the "seamless" allegation. Plaintiff infers from the product's appearance that the inter-chixel pixel spacing must match the intra-chixel pixel spacing, as required by the claim. (Compl. p. 6). ¶¶31, 32 col. 13:5-9
  • Identified Points of Contention:
    • Technical Questions: A primary point of contention will be the actual, physical construction of the accused displays. The complaint lacks direct evidence and relies on inference. The core technical question for the '895 Patent is whether the accused displays use a perforated screen at all. For the '707 Patent, the question is whether the accused "LED panels" meet the specific definition of "chixels" and whether the pixel gaps are "substantially equal" across chixel boundaries.
    • Scope Questions: The case raises questions about the scope of the patents themselves. The '895 and '707 patents appear to describe two distinct technological approaches to creating a flexible display (a perforated screen vs. modular rigid chixels). A key question for the court will be whether the accused products, once analyzed, fall within the scope of either patented method, or practice a different, non-infringing technology.

V. Key Claim Terms for Construction

  • The Term: "rigid chixel" (’707 Patent, Claim 1)

    • Context and Importance: This term defines the fundamental building block of the invention in the '707 and '516 patents. The infringement case hinges on whether Defendant's "LED panels" (Compl. ¶28) meet the specific definition of a "rigid chixel." Practitioners may focus on this term because its construction will determine whether generic LED modules fall within the claim scope.
    • Evidence for a Broader Interpretation: The patent summary describes a chixel broadly as a "self-contained pixel-containing chip." ('707 Patent, col. 1:31-32).
    • Evidence for a Narrower Interpretation: The specification describes chixels as being formed by subdividing a semiconductor wafer into portions containing a specific array of LEDs (e.g., a 4x8 pixel arrangement), suggesting a highly specific, integrated manufactured unit rather than a generic panel. ('707 Patent, col. 10:35-49).

  • The Term: "display screen component comprising a material that accommodates flexing" (’895 Patent, Claim 1)

    • Context and Importance: The definition of the "display screen" is critical to the '895 patent. The dispute may turn on whether this component must be a single, continuous sheet of material, or if it could be read to cover an assembly of separate panels that collectively flex.
    • Evidence for a Broader Interpretation: The specification mentions various flexible materials like "plastics, fiberglass, acrylic and other polymers," which could be used in various forms. ('895 Patent, col. 4:17-19).
    • Evidence for a Narrower Interpretation: The embodiment shown in Figure 5 depicts a single, continuous screen component being bent into a curve, which may suggest the term implies a unitary, monolithic structure. ('895 Patent, Fig. 5).

  • The Term: "substantially equal" (’707 Patent, Claim 1)

    • Context and Importance: This term quantifies the required uniformity of pixel gaps within and between chixels, which is the basis for the "seamless" image quality. The entire infringement theory for the '707 patent family rests on the accused products achieving this level of uniformity.
    • Evidence for a Broader Interpretation: The specification notes the goal is to make the pixel gap line "less noticeable to a viewer," which could support a functional, perceptual standard rather than a strict mathematical one. ('707 Patent, col. 8:30-32).
    • Evidence for a Narrower Interpretation: Claim 1 explicitly requires the first and second pixel gaps to be substantially equal "across said flexible display," suggesting a high degree of precision is a key, non-obvious feature of the invention being claimed. ('707 Patent, col. 13:7-9).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all three patents-in-suit. The allegations state on "information and belief" that Defendant provides "directions, instructions, and/or other materials" that encourage infringement and that the accused components are "especially made or adapted for use in the infringement" and are not staple articles of commerce. (Compl. ¶¶ 45-46, 57-58, 69-70).
  • Willful Infringement: The complaint alleges willful infringement of the ’895 and ’707 patents based on Defendant’s alleged receipt of a notice letter on May 10, 2017. (Compl. ¶¶ 47, 59). For all three patents, willfulness is also asserted based on the filing of the complaint itself establishing knowledge. (Compl. ¶¶ 43, 55, 67).

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

  • A central issue will be one of evidentiary proof: The complaint is filed on information and belief, without direct technical analysis of the accused products. The case will depend heavily on what facts emerge during discovery regarding the actual internal construction of Defendant's displays, a fact Plaintiff acknowledges by requesting expedited inspection.
  • A key question will be one of technological mismatch: The asserted patents describe two distinct architectures for a flexible display—a perforated flexible screen ('895 patent) versus an assembly of rigid pixel modules ('707 patent family). The court will have to determine whether the accused products practice either of these specific claimed technologies, or a different one entirely.
  • The case will also turn on a question of definitional scope: The construction of terms like "rigid chixel" and "substantially equal" will be critical. The court’s interpretation will define the boundary between the patented inventions and either the prior art or any non-infringing design used by the Defendant.