LND Enterprises LLC v. Toro Co Unique Lighting Systems A Division Of Toro Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: LND Enterprises, LLC d/b/a Encore Landscape Lighting (Michigan)
  • Defendant: The Toro Company (Delaware) and Unique Lighting Systems (California)
  • Plaintiff’s Counsel: The Mendelson Law Firm; Quinn IP Law
• Case Identification: 5:20-cv-10047, E.D. Mich., 01/07/2020
• Venue Allegations: Venue is alleged to be proper based on Defendants’ sale of products and other business activities within the Eastern District of Michigan.
• Core Dispute: Plaintiff seeks a declaratory judgment that its landscape lighting products do not infringe, and that Defendants’ patents-in-suit are invalid and/or unenforceable.
• Technical Context: The dispute concerns the ornamental designs of, and wiring methods for, low-voltage landscape lighting fixtures.
• Key Procedural History: The complaint was filed in response to a series of demand letters from Defendant Toro, beginning October 22, 2019, which alleged infringement and demanded that Plaintiff cease sales and provide an accounting. Plaintiff’s central allegation across multiple counts is that Defendants committed inequitable conduct by failing to disclose their own prior product sales to the U.S. Patent and Trademark Office during prosecution of the asserted design patents.

Case Timeline

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

U.S. Design Patent No. D495,079 - "Pulsar Lighting Fixture"

• Patent Identification: U.S. Design Patent No. D495,079, titled "Pulsar Lighting Fixture," issued August 24, 2004 (Compl. ¶8).

The Invention Explained

• Problem Addressed: Design patents do not solve technical problems; they protect the novel, ornamental, and non-functional appearance of an article of manufacture. The goal is to create a distinct aesthetic for a product.
• The Patented Solution: The '079 Patent claims the specific ornamental design for a landscape lighting fixture. Key visual features shown in the drawings include a cylindrical housing with several circumferential grooves, a top shroud cut at an angle, and a bottom-mounted adjustable knuckle for aiming the light ('079 Patent, Figs. 1-6).
• Technical Importance: The complaint alleges that Defendant Unique has sold a fixture under the name "Probe" since "as early as 2000" (Compl. ¶24). The complaint presents a visual comparison, suggesting the '079 Patent design is identical to this alleged prior art product. This side-by-side comparison of the patented design and the alleged prior art fixture from a 2000 catalog photo is intended to support Plaintiff's invalidity claim (Compl. p. 7).

Key Claims at a Glance

• Design patents have a single claim for the ornamental design as shown in the drawings. The claim of the '079 Patent is: "The ornamental design for a pulsar lighting fixture, as shown." ('079 Patent, Claim).

U.S. Design Patent No. D519,662 - "Probe Lighting Fixture"

• Patent Identification: U.S. Design Patent No. D519,662, titled "Probe Lighting Fixture," issued April 25, 2006 (Compl. ¶9).

The Invention Explained

• Problem Addressed: As with the '079 Patent, the purpose is to protect a specific ornamental design for a lighting fixture.
• The Patented Solution: The '662 Patent claims an ornamental design for a lighting fixture characterized by a smooth, un-grooved cylindrical housing, a top shroud cut at an angle, and a side-mounted adjustable knuckle ('662 Patent, Figs. 1-6). The complaint specifically identifies this "side mount design" as a feature of the patent (Compl. ¶29).
• Technical Importance: The complaint alleges that the '662 Patent is invalid due to prior sales of an identical "Pulsar" light fixture by Defendant Unique dating back to 2000 (Compl. ¶32). It further alleges non-infringement based on "substantial differences" between the patented side-mount design and the accused product's bottom-mount design (Compl. ¶34).

Key Claims at a Glance

• The single claim of the '662 Patent is: "The ornamental design for the probe lighting fixture, as shown." ('662 Patent, Claim).

U.S. Patent No. D550,877 - "Light Fixture"

• Patent Identification: D550,877, "Light Fixture," issued September 11, 2007 (Compl. ¶10).
• Technology Synopsis: This design patent covers the ornamental appearance of a rectangular, staked uplight fixture with a flat, rectangular adjustment mechanism.
• Asserted Claims: The single claim for the ornamental design as shown.
• Accused Features: Plaintiff's BL-30 and BL-31 fixtures are accused (Compl. ¶38). The complaint alleges invalidity based on Defendant's own prior sales of the "Starburst" fixture since at least 2000 and provides photographic evidence from a March 2004 trade show to support this (Compl. ¶42, p. 14).

U.S. Patent No. D551,789 - "Light Fixture"

• Patent Identification: D551,789, "Light Fixture," issued September 25, 2007 (Compl. ¶11).
• Technology Synopsis: This design patent covers the ornamental appearance of a different rectangular, staked uplight fixture, which the complaint alleges is referred to by Defendants as the "Stellar" light fixture (Compl. ¶39).
• Asserted Claims: The single claim for the ornamental design as shown.
• Accused Features: Plaintiff's BL-30 and BL-31 fixtures are accused (Compl. ¶49). The complaint alleges invalidity based on Defendant's prior sales of the "Stellar" fixture and incorrect inventorship, citing a whiteboard photograph from June 4, 2004, as evidence of an unnamed co-inventor's contribution (Compl. ¶¶ 52, 74, p. 29).

U.S. Patent No. D563,588 - "Light Fixture"

• Patent Identification: D563,588, "Light Fixture," issued March 4, 2008 (Compl. ¶12).
• Technology Synopsis: This design patent covers the ornamental appearance of a circular, surface-mounted step light with a partial "eyelid" hood.
• Asserted Claims: The single claim for the ornamental design as shown.
• Accused Features: Plaintiff's SD-46 light fixture is accused (Compl. ¶58). The complaint alleges invalidity based on Defendant's prior sales of the "Gemini" fixture since 2000, as well as sales of a nearly identical "Eyelid Step Light" by a third party in 2001 (Compl. ¶¶ 61-63). A visual comparison of the patent to the third-party prior art is provided (Compl. p. 26).

U.S. Patent No. 7,699,481 - "Method of Wiring Lighting Fixtures to Achieve Uniform Voltage Drop"

• Patent Identification: 7699481, "Method of Wiring Lighting Fixtures to Achieve Uniform Voltage Drop," issued April 20, 2010 (Compl. ¶13).
• Technology Synopsis: This utility patent addresses the problem of inconsistent brightness in low-voltage lighting systems caused by voltage drop over distance ('481 Patent, col. 1:46-52). The patented solution is a method that involves connecting multiple light fixtures, each with an equal-length wire lead, to a central "wiring hub" (referred to as an "Equalizer Hub™"), which itself is connected to the power source by a "homerun wire," thereby ensuring each fixture is an equal electrical distance from the source ('481 Patent, Abstract; col. 4:45-54).
• Asserted Claims: The complaint does not specify which claims are asserted.
• Accused Features: The complaint states that Defendants "fail to provide any basis or analysis of Encore's allegedly infringing products to support their infringement claims" for the '481 patent (Compl. ¶68).

III. The Accused Instrumentality

Product Identification

• Plaintiff's Encore-branded landscape lighting fixtures, specifically models BL/AL-26, BL-27, BL-30, BL-31, and SD-46 (Compl. ¶¶ 21, 38, 49, 58).

Functionality and Market Context

• The complaint focuses on the ornamental features of the accused products as part of its non-infringement and invalidity arguments.
  • The BL/AL-26 and BL-27 fixtures are described as utilizing a "bottom mount design" (Compl. ¶31). A side-by-side photograph comparing the Encore BL/AL-26 to the '662 Patent drawing highlights this alleged difference (Compl. ¶34, p. 11).
  • The BL-30 and BL-31 fixtures are alleged to use a "circular shaped adjustment mechanism" and have a "wide in profile" housing with grooves and an angled end, which purportedly distinguishes them from the designs of the '877 and '789 patents (Compl. ¶¶ 46a-b, 55a-b). A three-way visual comparison is provided to illustrate these alleged differences (Compl. ¶46c, p. 18; ¶55c, p. 23).
  • The complaint does not provide any description of the wiring methods or systems sold or used by Plaintiff in connection with its products.

IV. Analysis of Infringement Allegations

The complaint seeks a declaratory judgment of non-infringement. The analysis below summarizes Plaintiff's arguments as to why its products do not infringe. The complaint focuses its non-infringement arguments on the '662, '877, and '789 patents. It does not present a non-infringement argument for the '079 or '588 patents, focusing instead on invalidity.

’662 Patent Non-Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The primary question is one of design scope. In the eyes of an ordinary observer, is the difference between a "side mount" and a "bottom mount" knuckle significant enough to render the overall designs of the patented fixture and the accused product not substantially the same?
  • Technical Questions: The complaint does not raise technical questions regarding the '662 patent, as the dispute is over ornamental appearance, not function.

V. Key Claim Terms for Construction

For design patents, claim construction focuses on the overall visual impression of the claimed design as depicted in the drawings, rather than on specific textual limitations. The analysis determines the scope of the design to be protected.

• The Term: "The ornamental design for the probe lighting fixture, as shown" ('662 Patent, Claim).
• Context and Importance: The central dispute is whether the "side mount" feature is a dominant, character-defining element of the patented design or a minor detail. The answer to this question will determine whether Plaintiff's "bottom mount" products can be seen as "substantially the same" by an ordinary observer. Practitioners may focus on this distinction as it is the primary basis for Plaintiff's non-infringement argument (Compl. ¶34).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the core aesthetic is the sleek, unadorned cylindrical housing and the angled shroud, and that the precise location of the mounting knuckle is a less significant detail that does not change the overall visual impression.
  • Evidence for a Narrower Interpretation: The patent figures consistently and exclusively depict the knuckle in a side-mounted position ('662 Patent, Figs. 1, 2, 5, 6). Plaintiff's argument that this creates a "substantial difference" from a bottom-mount design suggests the mounting location is a critical, limiting feature of the claimed design (Compl. ¶34).

VI. Other Allegations

• Indirect Infringement: The complaint includes a general denial of any direct or indirect infringement for each asserted patent (e.g., Compl. ¶35). It does not, however, allege specific facts regarding inducement or contributory infringement, as it is a complaint for declaratory judgment.
• Willful Infringement: Willfulness is not alleged by Plaintiff.
• Inequitable Conduct: This is a central theme of the complaint. Plaintiff alleges that for all five asserted design patents, Defendants and/or the inventor knowingly withheld material prior art from the USPTO with an intent to deceive (Compl. ¶¶ 26b, 36b, 45b, 54b, 64b). The alleged prior art is primarily Defendants' own prior products, which were allegedly on sale more than one year before the patents' filing dates (e.g., Compl. ¶¶ 24, 32, 42).
• Inventorship: Count VII of the complaint alleges that Ken Rutkowski was an unnamed co-inventor of at least the '789 Patent (Compl. ¶73). The complaint alleges his omission was either intentional, which would invalidate the patent, or inadvertent, which would require correction and potentially give Plaintiff (as Mr. Rutkowski's company) rights to the patent (Compl. ¶¶ 76-78).

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

1. A Threshold Question of Validity: The case may turn on a dispositive factual question: did Defendants engage in public use or commercial sale of lighting fixtures with designs identical to those in the asserted patents more than one year prior to the patents' filing dates? If Plaintiff's evidence of these prior sales is substantiated, it could invalidate the design patents under the on-sale bar of 35 U.S.C. § 102.
2. The Scope of Design Protection: Should any of the design patents be found valid, a core legal issue will be the scope of their protection. Can a design patent focused on a "side-mount" fixture be broad enough to cover a "bottom-mount" fixture? The court's application of the "ordinary observer" test to the specific visual differences alleged by Plaintiff will be determinative of infringement.
3. The Impact of Conduct: The case raises significant questions about conduct before the USPTO. A key issue will be whether Plaintiff can prove by clear and convincing evidence that Defendants knowingly withheld material prior art with deceptive intent, which could render the patents unenforceable due to inequitable conduct. A related evidentiary question is whether the provided evidence is sufficient to establish that another individual made a material inventive contribution to the '789 patent design, potentially altering ownership rights or invalidating the patent.