DCT
0:17-cv-04161
Telebrands Corp v. Seasonal Specialties LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Telebrands Corp. (New Jersey)
- Defendant: Seasonal Specialties, LLC (Minnesota)
- Plaintiff’s Counsel: Briggs and Morgan, P.A.; Cooper & Dunham LLP
- Case Identification: 0:17-cv-04161, D. Minn., 12/14/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant regularly transacts and/or solicits business within the District of Minnesota.
- Core Dispute: Plaintiff alleges that Defendant’s decorative laser lighting projectors infringe two of Plaintiff's utility patents and three of its design patents related to landscape light projectors.
- Technical Context: The technology relates to consumer-grade laser projectors used for decorative lighting on homes and landscapes, which have become a popular alternative to traditional string lights for holiday displays.
- Key Procedural History: The filing is a Second Amended Complaint, indicating the pleadings have been modified since the case's initial filing, which can occur for various reasons including the addition of parties, claims, or asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2014-07-16 | ’327 Patent Priority Date |
| 2014-10-30 | D’707, D’083, D’715 Patents Priority Date |
| 2015-12-03 | ’847 Patent Priority Date |
| 2016-12-06 | D’707 Patent Issued |
| 2017-11-28 | D’083 Patent Issued |
| 2017-12-05 | D’715 Patent Issued |
| 2018-01-03 | Alleged Notice Date for D’083 and D’715 Patents |
| 2018-01-23 | ’327 Patent Issued |
| 2018-01-30 | ’847 Patent Issued |
| 2018-12-14 | Second Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,879,847 - "Decorative Lighting Apparatus Having Two Laser Light Sources," Issued Jan. 30, 2018
The Invention Explained
- Problem Addressed: The patent describes existing decorative laser lights as having shortcomings, including switch mechanisms that are limited in functionality or inconveniently located, and unreliable methods for affixing lenses that scatter the laser light (US 9,879,847 B2, col. 1:33-48).
- The Patented Solution: The invention is a decorative lighting apparatus with two distinct laser light sources, each providing a different color. It includes a switch that allows a user to select different lighting conditions (e.g., one color on, or both colors on) and a motion assembly with a motor that drives an "articulating optical element" to create moving light patterns on a projected surface (US 9,879,847 B2, Abstract; col. 8:3-20).
- Technical Importance: This approach provides users with a single device capable of generating dynamic, multi-colored decorative light shows, offering a more convenient and versatile alternative to installing traditional string lights (Compl. ¶9).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶25).
- The essential elements of independent claim 1 include:
- A body adjustably attached to a mounting element.
- A first laser light source providing a first light of a first color.
- A second laser light source providing a second light of a second color.
- A switch with at least two settings: a first setting for one light source on and the other off, and a second setting for both light sources on.
- A motion assembly including an articulating element configured to secure an optical element in the path of light from at least one laser.
- A motor coupled to the articulating element to impart movement to the optical element, causing the projected light to be articulated.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,874,327 - "Landscape Light," Issued Jan. 23, 2018
The Invention Explained
- Problem Addressed: The patent background identifies a need for improved decorative lighting apparatuses beyond conventional options like string lights or basic laser projectors (US 9,874,327 B2, col. 1:21-49).
- The Patented Solution: The invention is a landscape light that combines two different types of light sources to create a layered visual effect. It uses a primary laser light source with a lens to disperse the light (e.g., into discrete points) and a separate "background light assembly" that produces a moving field of background light. The apparatus is configured so that the dispersed laser light is projected "substantially within" the moving background light (US 9,874,327 B2, Abstract).
- Technical Importance: This configuration creates a novel and more complex visual presentation than a simple laser projector by layering a static or moving laser pattern on top of a moving, often softer, background light field (US 9,874,327 B2, col. 2:53-67).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶26).
- The essential elements of independent claim 1 include:
- A laser light source producing a laser light, including a lens configured to disperse it.
- A background light assembly, which includes a second light source producing a background light.
- A background light movement assembly configured to move the background light across a surface.
- A configuration where the dispersed laser light is projected substantially within the moving background light produced by the background light assembly.
- The complaint does not explicitly reserve the right to assert dependent claims.
Multi-Patent Capsule: U.S. Design Patent No. D773,707 - "Landscape Light," Issued Dec. 6, 2016
- Technology Synopsis: This patent claims the ornamental design for a landscape light. The design covers the visual appearance of the apparatus, characterized by a generally cylindrical housing with a circular face containing two light apertures, attached to an adjustable mounting bracket and ground stake (D773,707 S, FIG. 1).
- Asserted Claims: The single claim for the ornamental design as shown and described.
- Accused Features: The complaint alleges that the overall ornamental design of Defendant's "Infringing Products I," "Product 3," and "Infringing Products III" is substantially the same as the claimed design of the D’707 Patent (Compl. ¶¶ 20, 23). The complaint presents side-by-side visual comparisons of patent figures and photographs of accused products to support this allegation (Compl. p. 8-25).
Multi-Patent Capsule: U.S. Design Patent No. D804,083 - "Landscape Light," Issued Nov. 28, 2017
- Technology Synopsis: This patent claims an alternative ornamental design for a landscape light. The design is similar to the D'707 patent but features a distinct flared bezel around the circular face of the cylindrical housing (D804,083 S, FIG. 1).
- Asserted Claims: The single claim for the ornamental design as shown and described.
- Accused Features: The complaint alleges that the ornamental designs of "Product 3" and "Infringing Products III" are substantially the same as the claimed design of the D’083 Patent (Compl. ¶¶ 21, 23).
Multi-Patent Capsule: U.S. Design Patent No. D804,715 - "Landscape Light," Issued Dec. 5, 2017
- Technology Synopsis: This patent claims another ornamental design for a landscape light, again featuring a cylindrical housing on an adjustable stake. This design is distinguished by broken lines in the figures, which indicate that specific surface ornamentation and proportions are part of the claimed design, while other features are disclaimed (D804,715 S, FIG. 1).
- Asserted Claims: The single claim for the ornamental design as shown and described.
- Accused Features: The complaint alleges that the ornamental designs of "Product 3" and "Infringing Products III" are substantially the same as the claimed designs of the D’715 Patent (Compl. ¶¶ 22, 23).
III. The Accused Instrumentality
- Product Identification: The complaint identifies numerous accused products, grouping them into four categories: "Infringing Products I," "II," "III," and "IV" (Compl. ¶18). Specific product names include "LASER PROJECTOR," "LASER PROJECTOR WITH MOTION," "MOTION LASER PROJECTOR DOT PATTERN," and "MOTION LASER PROJECTOR DANCING SANTA" (Compl. pp. 6-7).
- Functionality and Market Context: The accused products are decorative laser projectors sold through at least one major retailer in the United States (Compl. ¶19). The complaint alleges they provide a convenient alternative to string lights by projecting points of light (Compl. ¶9). Functionally, certain products are alleged to include two laser sources, a switch, and a motion assembly ('847 Patent infringement allegations), while others are alleged to combine a dispersed laser light with a moving background light ('327 Patent infringement allegations) (Compl. ¶¶ 25-26). The complaint provides visual evidence comparing the external appearance of several accused products to the asserted design patents (Compl. pp. 8-47). For example, a table juxtaposes Figure 1 of the D'707 patent with a photograph of "SEASONAL SPECIALTIES' PRODUCT 1," showing a similar cylindrical housing, faceplate with two apertures, and mounting stake (Compl. p. 8).
IV. Analysis of Infringement Allegations
9,879,847 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A decorative lighting apparatus, comprising: a body adjustably attached to a mounting element... | Accused products include a body that is adjustably attached to a mounting element. | ¶25 | col. 3:4-10 |
| a first laser light source providing a first light having a first color; a second laser light source providing a second light having a second color; | The body of the accused products includes first and second laser light sources. | ¶25 | col. 3:59-67 |
| a switch including a first setting corresponding to the first light source being in an on condition and the second light source being in an off condition, and a second setting corresponding to the first light source and the second light source being in an on condition... | Accused products include a switch with at least two settings. | ¶25 | col. 5:6-21 |
| and a motion assembly, the motion assembly including: an articulating element configured to secure at least one optical element...and a motor coupled to the articulating element such that a movement generated by the motor is imparted to the optical element so that at least one of the first light and the second light...is articulated. | Accused products include a motion assembly with an articulating element to secure an optical element and a coupled motor that imparts movement to articulate the projected light. | ¶25 | col. 7:42-51 |
- Identified Points of Contention:
- Structural Questions: The complaint's allegations regarding the internal "motion assembly" are conclusory. A central question will be one of structural correspondence: What evidence does the complaint provide that the accused products' internal mechanism includes a component that meets the structural and functional requirements of the claimed "articulating element configured to secure at least one optical element"?
- Scope Questions: The construction of "articulating element" may be disputed. The court will need to determine whether the term is limited to the specific gear-based embodiments shown in the patent's figures or if it can be construed more broadly to cover other types of motor-driven optical mounts.
9,874,327 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A landscape light comprising: a laser light source producing a laser light and including a lens configured to disperse the laser light; | Accused Products 10 and 11 include a laser light source that produces a laser light and has a lens that disperses the light. | ¶26 | col. 3:50-67 |
| a background light assembly including: a second light source producing a background light; | The accused products include a background light assembly with a second light source that produces a background light. | ¶26 | col. 2:53-56 |
| a background light movement assembly configured to produce a movement of the background light...such that the background light moves across a surface... | The background light assembly is configured to move the background light across a surface. | ¶26 | col. 2:57-62 |
| the at least one laser light source and the background light assembly being configured such that the dispersed laser light is projected substantially within the moving background light... | The light dispersed by the laser is allegedly projected substantially within the moving background light. | ¶26 | col. 2:62-67 |
- Identified Points of Contention:
- Technical Questions: The claim requires a specific spatial and functional relationship: the laser light must be "projected substantially within the moving background light." A key question will be one of evidence and measurement: What technical evidence demonstrates that the accused products' two light projections are configured to satisfy this "substantially within" relationship during operation?
- Scope Questions: The term "substantially within" is a term of degree that will likely require construction. The dispute may focus on whether this requires the laser light pattern to be fully contained within the background light's projected area, or if significant or partial overlap is sufficient to meet the limitation.
V. Key Claim Terms for Construction
For the ’847 Patent
- The Term: "articulating element"
- Context and Importance: This term is central to the "motion assembly" limitation. The theory of infringement depends on whether the component that moves the optical element in the accused devices falls within the scope of this term. Practitioners may focus on this term because its construction will determine whether a wide or narrow range of motion mechanisms can be found to infringe.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is functional, requiring the element to be "configured to secure at least one optical element" and be coupled to a motor. This language could support a construction that covers any motor-driven mount for an optical component.
- Evidence for a Narrower Interpretation: The specification discloses a specific embodiment where the "articulating optical elements 510 may be secured within recesses of gears 508" (US 9,879,847 B2, col. 8:3-5; Fig. 5B). A defendant may argue that the term should be limited to such a gear-based structure.
For the ’327 Patent
- The Term: "projected substantially within the moving background light"
- Context and Importance: This limitation defines the novel visual effect and the core inventive concept of the patent. The entire infringement case for the '327 patent may hinge on the construction of this relational phrase.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The word "substantially" suggests the relationship is not absolute and allows for some minor deviation, such as the laser light pattern occasionally or partially extending beyond the background light's border while still achieving the intended combined visual effect (US 9,874,327 B2, Abstract).
- Evidence for a Narrower Interpretation: The term "within" implies containment. A defendant could argue that the plain meaning requires the boundary of the dispersed laser light projection to be, at all times, inside the boundary of the moving background light projection. The patent's abstract describes the configuration as such, which could support a narrower reading (US 9,874,327 B2, Abstract).
VI. Other Allegations
- Indirect Infringement: The complaint alleges active inducement of infringement for all five patents, stating that Seasonal Specialties encourages, markets, and promotes the use and sale of the accused products (Compl. ¶¶ 33, 40, 48, 56, 64).
- Willful Infringement: The complaint alleges that Defendant’s infringement is "deliberate and intentional" and that Defendant had "actual knowledge" of the patents (Compl. ¶¶ 27, 35, 41, 49, 58, 66). For the D'707, ’847, and ’327 patents, knowledge is alleged from "at least as early as the filing of the Complaint," suggesting a basis in post-suit conduct (Compl. ¶¶ 34, 41, 49). For the D'083 and D'715 patents, knowledge is alleged from January 3, 2018, a date prior to the filing of this Second Amended Complaint, which may support an allegation of pre-suit willfulness (Compl. ¶¶ 57, 65).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the utility patents will be one of evidentiary proof for internal structure and function: As the complaint relies on external observations and functional descriptions, a key question will be what discovery reveals about the internal mechanics of the accused products and whether they map onto the specific "articulating element" of the '847 patent and create the "substantially within" projection relationship required by the '327 patent.
- For the design patents, the case will turn on the application of the ordinary observer test: Will an ordinary observer, taking into account prior art in the field of landscape projectors, find the overall ornamental appearance of the accused products to be substantially the same as the claimed designs, or are the visual differences sufficient to avoid infringement?
- A third key question will relate to damages and willfulness: What evidence will support the allegation of "deliberate and intentional" infringement, and how will the court determine the operative notice date for each patent, particularly given the case's history as a Second Amended Complaint, to assess claims for enhanced damages?