DCT

5:16-cv-00812

Custom Dynamics LLC v. New Rage Cycles

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:16-cv-00812, E.D.N.C., 09/20/2016
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants have regularly conducted business in and shipped infringing products into North Carolina, establishing minimum contacts with the forum.
  • Core Dispute: Plaintiff alleges that Defendant’s aftermarket motorcycle LED turn signals infringe two utility patents and two design patents related to annular, wrap-around lighting fixtures.
  • Technical Context: The technology concerns auxiliary LED lighting systems for motorcycles, specifically annular fixtures designed to mount around tubular components like front forks, intended to provide enhanced visibility and a streamlined aesthetic.
  • Key Procedural History: The complaint alleges that the inventor, Jennifer S. Waring, achieved commercial success with the patented products before Plaintiff, Custom Dynamics, purchased the rights to the patents in September 2015. The complaint also states that Plaintiff sent a cease-and-desist letter to Defendants prior to filing the lawsuit, but Defendants allegedly continued their infringing activities.

Case Timeline

Date Event
2008-07-25 Priority Date for '345 and '187 Design Patents
2008-12-10 Priority Date for '061 and '331 Utility Patents
2009-12-01 '345 Design Patent Issued
2010-03-02 '187 Design Patent Issued
2012-06-05 '061 Utility Patent Issued
2013-01-01 Defendant NRC Launched (approximate date)
2014-11-04 '331 Utility Patent Issued
2015-09-01 Plaintiff Custom Dynamics Purchased Patent Rights (approximate date)
2016-09-20 Complaint Filing Date

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

U.S. Patent No. 8,192,061 - "Annular Lighting Fixture and Method for Illumination"

  • Patent Identification: U.S. Patent No. 8,192,061, "Annular Lighting Fixture and Method for Illumination," issued June 5, 2012.

The Invention Explained

  • Problem Addressed: The patent’s background section describes traditional motorcycle turn signals as often protruding from the vehicle, which can "detract from the motorcycle's overall aesthetics" and makes them susceptible to damage if the motorcycle falls over. It also notes a need for lamps that provide visibility from a greater number of angles to improve safety ('061 Patent, col. 1:26-53).
  • The Patented Solution: The invention is an annular, or ring-shaped, lighting fixture that can be attached around a tubular portion of a motorcycle, such as a front fork tube ('061 Patent, col. 2:58-62; Fig. 8). The fixture contains a plurality of lights, such as LEDs mounted on a flexible circuit board, within an external channel, providing a low-profile, integrated lighting source with a wide viewing angle ('061 Patent, Abstract).
  • Technical Importance: This design offered a method for integrating auxiliary lighting that was flush with the motorcycle’s existing structure, improving durability and aesthetics while enhancing rider visibility from multiple directions ('061 Patent, col. 1:54-57).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claim 2 (Compl. ¶¶24, 26).
  • Independent Claim 1 requires:
    • A motorcycle with a tubular portion and an attached fixture.
    • The fixture has an "annular housing" with a channel on its outside, with the inside of the housing attached to the motorcycle's tubular portion.
    • A "plurality of lights" is disposed in the channel.
    • The lights comprise LEDs on one or more "flexible circuit boards."
    • The plurality of lights "sweeps at a viewing angle of from not less than 60 degrees to not more than 270 degrees."

U.S. Patent No. 8,876,331 - "Annular Lighting Fixture and Method for Illumination"

  • Patent Identification: U.S. Patent No. 8,876,331, "Annular Lighting Fixture and Method for Illumination," issued November 4, 2014.

The Invention Explained

  • Problem Addressed: As a continuation of the application leading to the ’061 Patent, this patent addresses the same problems of aesthetically displeasing, damage-prone, and limited-visibility motorcycle lighting ('331 Patent, col. 1:41-54).
  • The Patented Solution: The invention details a specific construction for an annular lighting fixture, comprising a housing made of a "top portion and a bottom portion" that together define a channel ('331 Patent, col. 9:48-52). A "transparent or translucent portion" is disposed in the channel to cover the lights, protecting them from the elements while allowing light to pass through ('331 Patent, col. 8:24-34; Fig. 9).
  • Technical Importance: This patent provides a more detailed structural definition for a robust, weather-resistant version of the wrap-around lighting concept, focusing on a multi-part assembly.

Key Claims at a Glance

  • The complaint asserts independent claims 1, 14, and 17, as well as dependent claims 2-5, 11, 12, and 13 (Compl. ¶¶38, 41, 47, 48).
  • Independent Claim 1 requires:
    • An "annular lighting fixture."
    • An "annular housing" with a "top portion and a bottom portion."
    • A "channel" defined by the top and bottom portions.
    • A "transparent or translucent portion" disposed between the top and bottom portions in the channel.
    • A "plurality of lights" in the channel.
  • Independent Claim 14 adds requirements for a "vertical axis" and the lights having an "emitting axis perpendicular to the vertical axis."
  • Independent Claim 17 is a method claim requiring the steps of "attaching" a fixture with the elements of claim 1 to a vehicle, "emitting light," and "operating said vehicle to provide electrical energy."

U.S. Design Patent No. D605,345 - "Light Fixture"

  • Patent Identification: D605,345, "Light Fixture," issued December 1, 2009.
  • Technology Synopsis: This patent claims the ornamental design for an annular light fixture. The design is characterized by its overall ring shape, flat top and bottom surfaces, and an array of segmented lights that are visible from the front and side views but not the rear view ('345 Patent, Figs. 1-7; Compl. ¶56).
  • Asserted Claims: Design patents contain a single claim for the ornamental design as shown and described (Compl. Count III).
  • Accused Features: The complaint alleges the accused product has the "same annular shape, the same flat solid top and bottom, and the same segmented lights" arranged in the same manner as the patented design (Compl. ¶56).

U.S. Design Patent No. D611,187 - "Light Fixture"

  • Patent Identification: D611,187, "Light Fixture," issued March 2, 2010.
  • Technology Synopsis: This patent claims an ornamental design for a light fixture very similar to the '345 patent. It protects the specific visual appearance of the annular housing and the pattern of segmented lights within it, creating a distinct aesthetic impression ('187 Patent, Figs. 1-7; Compl. ¶65).
  • Asserted Claims: Design patents contain a single claim for the ornamental design as shown and described (Compl. Count IV).
  • Accused Features: The infringement allegation is based on the accused product having the "same annular shape, the same flat solid top and bottom, and the same segmented lights" as shown in the patent, making the designs substantially the same (Compl. ¶65).

III. The Accused Instrumentality

  • Product Identification: Defendant's "Snap-On Front LED Turn Signals" (Compl. ¶19).
  • Functionality and Market Context: The accused product is an aftermarket lighting accessory for motorcycles, designed to be mounted on the front forks to serve as turn signals (Compl. ¶¶19, 25.a). The complaint alleges the product consists of an annular housing containing a flexible circuit board with LEDs, which is then attached to the motorcycle (Compl. ¶¶25.c, 25.d). A photograph shows the accused product installed on the front forks of a motorcycle. (Compl. ¶25.a). Defendant NRC is described as an "aftermarket motorcycle parts manufacturer" that sells the accused product through its own website and third-party dealers such as Revzilla and Cycle Gear (Compl. ¶¶18, 30).

IV. Analysis of Infringement Allegations

’061 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A motorcycle, said motorcycle comprising a tubular portion and a fixture attached about said tubular portion... The accused product is shown attached to the tubular front forks of a motorcycle. A photograph in the complaint shows the Snap-On Front Turn Signals installed on a motorcycle. (Compl. ¶25.a). ¶25.a col. 2:58-62
...an annular housing having a channel along the outside of said housing, wherein the inside of said annular housing is attached about said tubular portion... The accused product is alleged to have an annular housing with an external channel for lights, and is attached around the motorcycle's tubular forks. A photograph shows the disassembled product, revealing its housing and channel. (Compl. ¶25.c). ¶25.c col. 2:63-65
...a plurality of lights disposed in said channel... The accused product contains multiple lights within its channel. ¶25.c col. 5:12-13
...one or more flexible circuit boards, wherein said plurality of lights comprises light emitting diodes mounted upon said one or more flexible circuit boards... The product allegedly contains LEDs mounted on a flexible circuit board. A provided image displays a flexible strip of LEDs purportedly from the accused product. (Compl. ¶25.d). ¶25.d col. 2:40-42
...and wherein said plurality of lights sweeps at a viewing angle of from not less than 60 degrees to not more than 270 degrees. The complaint includes a photograph of the accused product overlaid on a protractor, with markings intended to show that the lights physically extend over an arc from 60 to 270 degrees. p. 7 col. 2:1-3
  • Identified Points of Contention:
    • Scope Questions: A central dispute may arise over the meaning of "sweeps at a viewing angle." The complaint's evidence, a photograph of the physical product on a protractor (Compl. p. 7), suggests an interpretation based on the physical arc of the LED strip. The question for the court will be whether this term defines a physical characteristic of the device or an optical characteristic of the light it emits.
    • Technical Questions: The methodology used in the complaint to measure the "viewing angle" (Compl. p. 7) raises the evidentiary question of whether this physical measurement accurately maps to the claim limitation as it would be understood by a person of ordinary skill in the art.

’331 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An annular lighting fixture, comprising: an annular housing comprising a top portion and a bottom portion; The accused product is alleged to be an annular fixture with a housing constructed from a top and a bottom piece. A photograph shows the disassembled components of the accused product. (Compl. ¶40). ¶40.a, ¶40.b col. 8:1-4
...a channel defined by said top portion and said bottom portion; The top and bottom portions of the accused product's housing are alleged to form a channel. ¶40.c col. 9:51-52
...a transparent or translucent portion disposed between said top portion and said bottom portion in said channel; and The product is alleged to include a transparent or translucent cover piece situated within the channel between the housing's top and bottom portions. ¶40.d col. 8:24-29
...a plurality of lights disposed in said channel. The accused product's channel contains multiple lights. ¶40.e col. 8:31-32
  • Identified Points of Contention:
    • Scope Questions: For claim 14, the complaint provides a photograph of the product with a pen inserted to illustrate a "vertical axis" (Compl. ¶46), raising the question of whether this informal demonstration satisfies the claim's specific geometric and orientation requirements.
    • Technical Questions: For method claim 17, which requires "attaching" the fixture, the complaint alleges Defendants "practice this method" (Compl. ¶48). A key question will be whether Defendants' own actions (e.g., for testing or marketing) constitute direct infringement of the method, or if liability hinges entirely on the inducement of its customers.

V. Key Claim Terms for Construction

  • The Term: "sweeps at a viewing angle" (’061 Patent, Claim 1)

    • Context and Importance: This term's construction is critical to infringement of the ’061 Patent. The complaint's primary evidence for this limitation is a physical measurement of the arc of the LED strip (Compl. p. 7). Practitioners may focus on this term because if "viewing angle" is construed as an optical property of light dispersion rather than a physical dimension, the complaint's current evidence may be insufficient.
    • Intrinsic Evidence for a Broader Interpretation: The patent’s background emphasizes improving "visibility of the motorcycle to other drivers" from "a greater number of angles," which could support a broader, functional interpretation related to how the light is seen ('061 Patent, col. 1:20-28).
    • Intrinsic Evidence for a Narrower Interpretation: The specification states that "the plurality of lights runs the length of the channel at a viewing angle," directly linking the angle to the physical arrangement of the lights within the channel ('061 Patent, col. 2:1-2). This may support the complaint’s narrower, geometric interpretation.

  • The Term: "annular housing" (’061 Patent, Claim 1; ’331 Patent, Claim 1)

    • Context and Importance: The accused product is a "Snap-On" signal, which may imply it is not a continuous, unbroken ring prior to installation. Practitioners may focus on this term because the patent figures consistently show a closed-loop ring. The case may turn on whether a C-shaped or split-ring housing, designed to be flexible for installation, meets the "annular" limitation.
    • Intrinsic Evidence for a Broader Interpretation: The specification suggests the housing "may also be an arcuate form," which could be argued to encompass shapes that are curved but not necessarily a complete, closed circle ('061 Patent, col. 2:65).
    • Intrinsic Evidence for a Narrower Interpretation: The term "annular" itself suggests a ring, and every corresponding drawing in the patents (e.g., '061 Patent, Figs. 1-3; '331 Patent, Figs. 1-3) depicts a complete, unbroken, 360-degree ring structure, which could support a narrower definition requiring a closed loop.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges Defendants induce infringement of the ’061 and ’331 patents. The allegations are based on Defendants selling the product with the intent that customers will install and use it in an infringing manner. This is supported by reference to an instruction sheet (Exhibit E, not attached) and social media posts by Defendant Justin Vogel allegedly directing users to install the product on their motorcycles (Compl. ¶¶28, 33, 51).
  • Willful Infringement: The complaint alleges that Defendants' infringement "has been and continues to be willful" (Compl. ¶21). This allegation is supported by the claim that Plaintiff sent a cease-and-desist letter, thereby providing Defendants with pre-suit knowledge of the patents, and that Defendants "knowingly and intentionally continued their infringing behavior" thereafter (Compl. ¶¶35, 52).

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

  • A core issue will be one of definitional scope: can the phrase "sweeps at a viewing angle" from the ’061 patent be satisfied by a simple physical measurement of the LED strip’s arc, as the complaint alleges, or does it require evidence of a specific optical light-dispersion characteristic?
  • A second central question will be one of structural interpretation: does the term "annular housing," which is consistently depicted in patent figures as a complete, unbroken ring, read on the accused "Snap-On" product, which may have a split or C-shaped design to facilitate installation?
  • For the design patents, a key question will be one of visual comparison: will an ordinary observer, applying the proper legal standard, find the overall ornamental appearance of the accused signals to be substantially the same as the designs claimed in the ’345 and ’187 patents, or are there sufficient visual differences to avoid infringement?